Herr, Alymov & Nothmann on Whether the UPC Can Set Global FRAND Rates

Jochen Herr, Nikita Alymov, and Martin Nothmann have published an article titled Can the UPC set global FRAND rates?, 1/2026 GRUR Patent 18-24.  Here is the abstract:

The Unified Patent Court (UPC) is emerging as a key forum for SEP and FRAND disputes, yet its authority to set FRAND rates remains only partly defined.  This article examines whether, and under what conditions, the IPC may determine global FRAND rates focusing on procedural hurdles such as the party disposition principle, judicial discretion, territorial scope and the Huawei/ZTE compliance.  Furthermore, a recent order by the Local Division Paris confirms jurisdiction for counterclaims but leaves critical questions unresolved including whether stand-alone FRAND rate-setting actions are admissible beyond counterclaims in infringement actions.  This article will shed light on how the UPC’s evolving role could reshape licensing practices and forum selection.

The authors begin with a brief survey of FRAND determinations (or non-determinations) in Germany, the U.K., the U.S., and China, before taking on the principal topic of whether the UPC has competence to engage in FRAND rate-setting.  As noted in the abstract, in October 2025 the Paris Local Division in Sun Patent Trust v. Vivo concluded that it had jurisdiction to consider Sun Patent Trust’s request that the court, as an incident to Sun’s infringement claim, whether its offer was FRAND or if not.  (That order is now before the UPC Court of Appeal.  As the authors note in the body of the article, the request is not technically a counterclaim, notwithstanding the description of it as one in the above abstract; and it is fairly limited in what it says, to wit "The claimant has merely anticipated the so-called 'FRAND defence' that the defendant is raising against this type of infringement action. This FRAND defence falls within the jurisdiction of the UPC, according to a consistent UPC CFI caselaw which indicates that the FRAND issue can be dealt with incidentally by the UPC . . . . [A] discussion of FRAND terms, at least as a defence raised by VIVO at the time of the statement of defence, will undoubtedly follow, as anticipated by both parties. In the present case, all facts and arguments relevant to the determination of FRAND terms, whether admissible or not, will have to be debated by the defendants.")  The article then discusses the UPC’s decisions in Panasonic/OPPO and Huawei/Netgear, both of which concluded that they were competent to consider a FRAND rate-setting counterclaim, but did not actually do so after finding the implementers to be unwilling licensees.  The authors also discuss the possibility of stand-alone FRAND rate-setting actions in the UPC, but describe it as “problematic” in view of the various legal and practical obstacles that would have to be overcome.