What Is the Significance of a FRAND License Declaration for Standard Essential Patents with Regard to their Transferability? – News from Germany

Abstract

Abstract There has been considerable movement in German licensing law for some years now. Based on the fate of the license in the case of the granting of sub-licenses and in the case of insolvency of one of the contracting parties involved, a number of court decisions have been handed down which mainly deal with the legal nature of licenses and their mode of operation. Moreover, there is now an internationally significant development in licensing law, namely the increasing independence of patents used in standards, which have increasingly become the subject of economic considerations – and not only of the companies or inventors filing them.1 These so-called standard essential patents (SEPs) are the subject of numerous legal disputes and legislative activities and constitute a scientific discourse around the globe. In 2015, the European Court of Justice (ECJ) created the first leading case for the EU with regard to SEPs in its highly regarded Huawei/ZTE ruling.2 Although an abundance of decisions of the courts of first instances are now available, many questions still remain unanswered since the fundamental decision of the ECJ. There is controversy both over the dogmatic classification of the FRAND declaration and the legal consequences of the declaration’s binding effect. It is particularly unclear what happens to the FRAND declaration when the SEP is transferred to a third party and whether, how and to what extent the acquirer is bound by this declaration of the transferor. In a decision that can certainly be described as bold, a Higher Regional Court has now ruled on some of these issues for the first time, thus providing further food for discussion.3