Global FRAND-Licensing by EU National Courts: The Winner Asks Them All? – On Global SEP Disputes and International Jurisdiction

Abstract

Many legal questions are currently being discussed in the – globalized – world of enforcing standard essential patents (SEP). However, one important question is often overlooked: Who decides on these SEP issues and on what basis? In other words: Are alternative dispute resolution mechanisms the (only) solution for global FRAND disputes or are courts of law the proper avenue to decide these cases? If so, which court has or should have jurisdiction over the dispute? At the moment, national courts of different nationalities (can) consider themselves competent to rule on the same FRAND matter. This leads to forum shopping, to a race to the courts and to parallel proceedings. Parties are fighting to secure jurisdictions for a judicially determined portfolio FRAND licence by seeking anti-suit-injunctions or anti-anti-suitinjunctions (and so on). Courts are fighting for sovereignty by issuing anti-suit-injunctions or anti-anti-suit-injunctions (and so on). There are cross-border constellations and conflicts of jurisdiction. Therefore, legal scholars are demanding comity from the national courts and wishing for an international FRAND tribunal. Before establishing an entirely new tribunal, however, it is necessary to discuss the instruments that are already in place to solve conflicts of jurisdiction: International civil procedure law and principles of international jurisdiction. In this article I point out the challenges arising from the large number of national courts that have international jurisdiction for the same global FRAND dispute. From a German perspective, which is strongly shaped by EU law, I describe how these challenges are currently addressed in international civil procedure law and propose a different de lege lata approach. Then, I briefly examine the expected impact of the UPCA on global FRAND disputes. Since the impact will be minimal, I discuss new approaches to address the remaining challenges.

Keywords

• SEP
• FRAND
• Global licensing
• International jurisdiction
• Brussels Ibis Regulation