Some Recent German Articles on FRAND-Related Topics

1. Martin Schaffer and Christian Czychowski have published a paper titled Wer bestimmt, was FRAND ist?, in the June 2018 issue of GRUR (pp. 582-85).  Here is the abstract (my translation from the German):

To determine the meaning of FRAND is surely one of the most difficult questions in patent law.  In this regard, copyright law has addressed similar questions regarding the licensing of mass uses.  Moreover, section 23 of the Patent Law already offers in its valuation model the possibility of drawing FRAND declarations into the patent licensing system.  This should be accomplished, however, in the context of an action for rate-setting and dispute resolution.  The following contribution offers some preliminary ideas.

In case you're not familiar with the aforementioned article 23, here is a translation of it from WIPO's website: 

(1) Where a patent applicant or the person entered in the Register as the proprietor of the patent (section 30 (1)) declares to the German Patent and Trade Mark Office in writing that he is willing to allow anyone to use the invention in return for equitable remuneration, the annual renewal fees due in respect of the patent following receipt of the declaration shall be reduced to one half. The declaration shall be recorded in the Register and published in the Patent Gazette (Patentblatt).

(2) The declaration shall be inadmissible as long as there is an entry in the Register regarding the grant of an exclusive licence (section 30 (4)) or an application is pending before the German Patent and Trade Mark Office for such entry to be made.

(3) Any person who, subsequent to the declaration being entered, wishes to use the invention shall inform the proprietor of the patent of his intention. The information shall be deemed to have been effected if it has been dispatched by registered letter to the person entered in the Register as the proprietor of the patent or to his registered representative or the person authorised to accept service (section 25). The information shall indicate how the invention is to be used. Subsequent to the information, the informing party shall be entitled to effect use in the manner he has indicated. He shall be obliged, after the expiry of each calendar quarter, to inform the proprietor of the patent of the use effected and to pay the remuneration for that use. If he does not fulfil this obligation in due time, the person registered as proprietor of the patent may set him a reasonable extension of time for payment and, following expiry without the obligation being fulfilled, may prohibit further use of the invention.

(4) The remuneration shall be fixed by the Patent Division upon the written request of a party. Sections 46, 47 and 62 shall apply mutatis mutandis to the procedure. The request may be directed against more than one party. When fixing the amount of the remuneration the German Patent and Trade Mark Office may make an order requiring the party opposing the request to bear the costs of the procedure in whole or in part.

(5) After the expiry of a period of one year following the last fixing of remuneration, any party affected thereby may apply for its adjustment if in the meantime circumstances have arisen or become known which make the remuneration fixed appear obviously inappropriate. In other respects, subsection (4) shall apply mutatis mutandis.

(6) Where the declaration is made in respect of an application, the provisions of subsections (1) to (5) shall apply mutatis mutandis.

(7) The declaration may be withdrawn in writing vis-à-vis the German Patent and Trade Mark Office at any time, as long as the proprietor of the patent has not been informed of any intention to use the invention. The withdrawal shall take effect when it is filed. The sum by which the annual renewal fees have been reduced shall be paid within one month of the withdrawal of the declaration. If the difference is not paid within the time limit specified in the third sentence, it may still be paid together with the surcharge for late payment before the expiry of a period of a further four months.

The U.K. has a similar "license of right" provision in section 46 of its patent law.  Anyway, Drs. Schaffer and Cychowski argue that something along these lines could be used to determine FRAND rates.  If I understand correctly, the proposal would be for SEP owners to establish voluntary agents (analogous to collective rights organizations in copyright) to grant nonexclusive licenses on a standard-wide basis.  The authors recognize that for such a proposal to work, there would have to be a critical mass of owners willing to participate.

2.  Maximilian Haedicke has published an article titled Vorlagepflichten und Schutz vetraulicher Informationen im Patentverletzungsprozess ("Submission requirements and protection of confidential information in patent infringement proceedings") in the June 2018 issue of Mitteilungen der deutschen Patentanwälten (pp. 249-55).  Here is the abstract (again, my translation):

Recently, interest has intensified surrounding the question of how to protect confidential information in patent infringement proceedings.  Comprehensive legal means for the protection of secret information are not in place.  Nevertheless, it is important to achieve a balance among the protection of litigants, especially their right to a legal hearing, the claim to access to justice, and also the public interest in transparent jurisprudence and legal development.  This essay is intended to discuss, under what conditions potentially confidential information is introduced in patent litigation, whether it is adequately protected, and what improvements should be considered.

For previous reference on this blog to this topic, which is becoming important in FRAND matters in Germany, see here and here.

3. Michael Nieder has published an article titled SEP-Lizenzen-ein Fall für die Gesamtgläubigerschaft? ("SEP Licenses:  A Case for Joint Creditorship?"), in the July 2018 issue of GRUR (pp. 666-70).   Here is the abstract in my translation:

In SEP proceedings the FRAND license plays a prominent role.  Different answers have been proposed to the question of how to avoid overburdening implementers with royalty payments when there are a large number of claimants.  The author proposes the use of rules for joint creditorship for resolving the accumulated license claims of SEP owners up to the aggregate royalty burden.

If I'm understanding correctly, the procedure the author envisions, based on sections 428 and 430 of the BGB (the German Civil Code), strikes me as functionally somewhat similar to the proposal made a couple of years ago by Bartlett and Contreras for resolving FRAND disputes through use of interpleader.