AIPPI Q293: Compulsory Licensing

Compulsory licensing is a topic I briefly discuss in my book Remedies in Intellectual Property Law at pages 235-49, so I was interested when I recently came across a piece in a recent issue of GRUR Int. by Fabian Hoffmann, Wolrad Prinz zu Waldeck und Pyrmont, Niclas Gajeck, Jérôme Kommer, Hendrik Meier, and Carsten Paga, titled AIPPI-SQ 293 – Compulsory Licensing for Patents – the State of Play from a German Perspective, 75 GRUR Int. 409 (2026).  Here is the abstract:

Compulsory licence law – though not often applied in practice – has played a decisive role in the historical development of patent law. Compulsory licences function as an ultima ratio instrument utilized only when patents are not used, when they obstruct crucial innovation, or when the public interest requires the use of the patented technology, especially in the field of public health. Despite this fundamental role, the law governing compulsory licences lacks harmonization on both the European and international level. Such harmonization is desirable to provide for a globally aligned, fast and efficient system. AIPPI Study Question 293 on compulsory licences aims to foster future harmonization in this area. AIPPI collected the responses of 38 national groups, published a summary report, and ultimately adopted a resolution on compulsory licences on 16 September 2025 in Yokohama. This article presents the key responses of the German national group of AIPPI to the study. It outlines the history, legal basis and fundamental case law of compulsory licensing in Germany. Further, it analyses the grounds and scope of compulsory licensing under German law and then discusses current issues relating to the compulsory licensing system, such as sublicensing and compulsory licences for patent applications or for products that are intended for export. The article concludes with insights on the determination of reasonable remuneration and an economic analysis of the impact of compulsory licensing.

As the article states, it is based to some extent on the German national group’s response to AIPPI Study Question 293.  The article is very readable and thorough in its discussion of the relevant history, German statutory provisions, and case law on the topic.  As the authors note, there is only one case since 1949 in which the German Federal Supreme Court has approved a compulsory license granted under article 24 of the German Patent Act (previously noted on this blog here).  The German Patent Court's subsequent determination of the applicable royalty in that case (see brief mention on this blog here) is helpful in setting forth the factors to consider in setting the amount of the compulsory licensing royalty—essentially, as the authors put it, terms reflecting what “reasonable parties would have agreed on in a licence agreement,” probably on the basis of the “abstract licence analogy” (i.e., largely the same sort of factors that would be relevant in an infringement case).  The authors argue that if the patent owner is a practicing entity that has been exploiting its invention as a monopolist, this would weigh in favor of an increase over the typical rate.

Regarding the AIPPI Study Question, all 38 responses, plus AIPPI’s resolution and its summary of responses, can be found on AIPPI’s website.  (From www.aippi.org, go to “Library,” then type “Q293” into “Search Our Library”.)  I haven’t read all of these yet myself, but my initial take is that the U.S. response takes an unduly dismissive attitude toward compulsory licensing, even as a response to public health emergencies.  Toward the beginning it states that the U.S. does not have compulsory licensing of patented inventions as such, but that “in very narrow specific situations, compulsory licensing-like rights may be available,” citing the possibility of march-in rights under the Bayh-Dole Act (to date, never used); a provision of the Clean Air Act (ditto); ongoing royalties in lieu of injunctive relief under eBay; and 28 U.S.C. § 1498.  This last is a statute that authorizes the federal government to take a nonexclusive license to any patented invention in exchange for fair market value, and actually is used with some frequency.  (For discussion, see this KEI Briefing Note by Jamie Love and Lokesh Vyas).  The U.S. report also does not mention court-ordered compulsory licensing as a remedy for certain antitrust violations, but it has been employed in some antitrust cases, as discussed in this 2004 article by (of all people) Makan Delrahim (who also notes a couple of other federal statutes that authorize compulsory licensing of patented inventions under limited circumstances).    

OxFirst Webinar on the Munich SEP Guidelines

OxFirst will be putting on a free webinar next Tuesday, October 21, at 1:30 p.m. U.K. time, titled “Putting Economics at the Center:  Munich's New SEP Guidelines.”  Here is OxFirst’s description:

On 13 August 2026, the 7th Civil Chamber of the Munich I Regional Court issued new FRAND Guidelines that move well beyond injunctions and negotiating conduct. The Court sets out in unusual detail how it intends to approach the economics of FRAND, including comparable licences, royalty ranges, top-down calculations, portfolio strength, patent counting, geographic differences and economic evidence.

 

For patent litigators, the implications are immediate. Which comparables will withstand scrutiny? How should portfolio strength be proved or challenged? And what economic evidence will now be needed to persuade the Court that a proposed royalty is, or is not, FRAND?

Speakers include Dr. Oliver Schön, Presiding Judge, Munich I Regional Court; Chris Longman (Qualcomm); Dr. Corin Gittinger (Freshfields); Dr. Clemens-August Heusch (Nokia); Scott Hayden (Amazon); and Andrew Yen (Panasonic).  Registration is available here. 

Juan Contreras on Latin American SEP Litigation

Juan Camilo Contreras has published an article titled The Role of Latin America as a Jurisdiction for Global SEP Litigation:  A Comparison with Global Trends, 75 GRUR Int. 307 (2026).  Here is the abstract:

This article explores the emerging role of Latin America as a forum for global litigation over standard-essential patents (SEPs), particularly in the context of preliminary injunctions and fair, reasonable and non-discriminatory (FRAND) licensing commitments. Traditionally peripheral in international patent enforcement, jurisdictions such as Brazil and Colombia have gained strategic importance as SEP holders increasingly seek product injunctions in these venues to exert leverage in global disputes. The article provides a comparative assessment of how courts in the two countries have handled SEP related claims, highlighting a discernible shift from automatic injunctions toward a more balanced, FRAND sensitive adjudication framework. The study argues that while Latin America continues to serve as a ‘pressure jurisdiction’ in SEP disputes, its courts and administrative bodies are aligning with global trends that emphasize proportionality, public interest, and regulatory scrutiny concerning product injunctions. This transformation offers important lessons for international observers and policymakers seeking to understand how emerging jurisdictions adapt global doctrines to local legal and institutional contexts.

This is a very informative article.  Even though I try to keep up with developments in the SEP/FRAND space, I was not previously familiar with some of the matters Professor Contreras discusses, including a decision by the Andean Community of Nations that found fault with the Bogota Court of Appeals' decision that applied Colombian national law that requires courts to consider necessity, effectiveness, and proportionality before granting preliminary injunctions (though Professor Contreras also writes the binding nature of the decision is debatable, and he reaches the overall conclusion that the trend in Brazil and Colombia is toward greater judicial restraint in granting preliminary injunctions in FRAND cases).  

I should also note that Professor Contreras published a chapter in Jorge Contreras' (no relation, as I understand it) recent edited volume FRAND Cases in Context (previously noted in this blog here), titled Ericsson v. Apple:  South America Enters the Injunction Race.  He also has written a chapter that will be included in the forthcoming edited volume that Tim Holbrook and I are co-editing, the Oxford Research Handbook on Extraterritoriality and Intellectual Property Law.

Bonadio et al. on SEP/FRAND issues

Enrico Bonadio and various coauthors have recently published several papers on SEP/FRAND issues in the European Intellectual Property Review.  All of these are available on Westlaw, in case you don’t have a standalone subscription to EIPR.

1.  Enrico Bonadio & Arjun Solanki, Consent, asymmetry and access:  a critical assessment of Acer v. Nokia, 48 EIPR 688 (2026).  Here is the abstract:

 

This article critically analyses the English Court of Appeal’s decision in Acer v Nokia, [[2026] EWCA Civ 564] in which the Court held that Nokia’s "Adjustable Licence Offer" (combining an interim licence with International Chamber of Commerce (ICC) arbitration to determine final RAND terms) constituted a valid RAND-compliant offer. The authors argue that the decision is doctrinally flawed on three grounds: it manufactures fictitious consent to arbitration where none contractually exists; it exacerbates structural asymmetries inherent in SEP licensing by granting patent holders unilateral forum selection rights; and it deprives implementers, as third-party beneficiaries of RAND commitments, of meaningful access to justice. Instead of simplifying RAND dispute resolution, the decision creates a more fragmented procedural landscape.

2. Enrico Bonadio & Robert Pocknell, FRAND injunction estoppel in SEP disputes:  an equitable doctrine as a shield against abuse conduct, 48 EIPR 642 (2026).  Here is the abstract:

This article argues that English equitable doctrines, promissory estoppel, proprietary estoppel, and acquiescence, furnish an independent basis for refusing injunctions to standard essential patent (SEP) holders who deploy them as leverage in what are, in substance, disputes about price. It develops a doctrine of fair, reasonable, and non-discriminatory (FRAND) injunction estoppel: where a SEP holder has made an irrevocable FRAND commitment and an implementer has relied upon it by investing in standard-compliant products, equity bars the exclusionary remedy. The article extends to supply chain estoppel, constraining injunctions against downstream device makers where the SEP holder declined to license upstream.

3. Enrico Bonadio & David Katz, The emergence of anti-contract enforcement injunctions in global SEPs disputes, 48 EIPR 558 (2026).  Here is the abstract:

The article analyses recent German and Unified Patent Court (UPC) injunctions that prevent parties from pursuing United Kingdom (UK) interim licences and contract-enforcement remedies in global standard essential patents (SEPs) disputes, conceptualising them as "anti-contract enforcement injunctions". It argues that the UK interim licence framework is a contract-based, jurisdictionally modest response designed to preserve fair, reasonable, and non-discriminatory (FRAND) adjudication without resorting to anti-suit injunctions, whereas the Munich and UPC orders undermine voluntary FRAND commitments and third-party beneficiary rights. The authors contend that using patent jurisdiction and European Union (EU) competition law rhetoric to block contractual enforcement erodes international comity, destabilises standardisation governance, and fragments global FRAND and competition law oversight.

4. Enrico Bonadio & Arjun Solanki, Enhancing standard essential patents’ enforcement through litigation:  a case for judicial determination over arbitration, 48 EIPR 159 (2026).  Here is the abstract:

 

This article examines the enforcement of standard essential patents (SEPs), arguing that judicial litigation offers superior outcomes over arbitration for licensing disputes. It situates SEPs disputes at the intersection of patent law, competition, and technical standards, underscoring the complexity arising from multi-jurisdictional enforcement and FRAND (fair, reasonable, and non-discriminatory) licensing obligations. The paper contends that key features of litigation—transparent rate-setting, rigorous expert evidence scrutiny, the development of binding precedent, and appellate review—make courts more effective in addressing the technical, economic, and public interest dimensions of SEPs licensing. While alternative forums like arbitration may provide efficiency and confidentiality benefits for simple commercial disputes, they lack robust mechanisms for rate calibration, transparency, precedent creation, and coordinated global relief. The article concludes that public adjudication remains essential for yielding predictable, equitable, and market-beneficial SEP licensing frameworks, while arbitration should play only a supplementary role in such contexts.

Lauriat on the Global Politics of SEPs

Last week I mentioned that IIC (the International Review of Intellectual Property and Competition Law, published by the Max Planck Institute in Munich) had published an editorial by Richard Arnold titled A Jurisdictionally Neutral Approach to SEP/FRAND Disputes?, 57 IIC 613 (2026). The following month’s issue begins with an insightful essay by Barbara Lauriat titled The Global Politics of Standard Essential Patents, 57 IIC 751 (2026).  Professor Lauriat’s thesis is that global “SEP policies can become disconnected from national interests.”  In support of this thesis, she cites, among other examples, the Brazilian courts’ receptivity to issuing preliminary injunctions in SEP cases, which she says “may be a useful tool for foreign SEP owners," but which may or may not serve the Brazilian economy.  She also writes that "identifying SEP policies that will best promote American leadership in standardized technology” is hardly straightforward, with “major players on both sides of the SEP owner-implementer divide”; and she notes that even countries that don’t set global FRAND rates can affect what happens in other jurisdictions by issuing injunctions (an important point that I am glad to see people beginning to mention).  Recognizing that what favors national interests one day can harm them the next, and that lobbying can divert policymakers from what may be in the national interest, she calls for “a balanced middle ground.”  Recommended!

Arnold on a Jurisdictionally Neutral Approach to FRAND

Lord Justice Richard Arnold has published an editorial titled A Jurisdictionally Neutral Approach to SEP/FRAND Disputes?, 57 IIC 613 (2026).  The essay argues that the best solutions to jurisdictional conflict in SEP/FRAND disputes would be, in order, a supranational tribunal; legally enforceable arbitration; and ad hoc agreement to arbitration.  In the absence of any of these, the author argues, “the next best thing would be a jurisdictionally neutral approach,” by which he means that “any court of competent jurisdiction faced with an SEP/FRAND dispute reaches the same conclusion”.  To this end, he identifies three common principles (while noting that the essay does not aspire “to present a fully developed proposal”):  first, that “courts should apply the law which governs the relevant IPR policy” (in the case of ETSI, for example, French law); second, that the provisions of these policies be interpreted to prevent both holdup and holdout; and third, that courts “bear[  ] in mind that a range of terms may be FRAND.”  Lord Justice Arnold expresses surprise that few jurisdictions thus far have undertaken to determine FRAND rates, and thinks that more should do so—and that if they followed the three principles, much of the tension among jurisdictions could be reduced.

This is an interesting piece—short and, as the author states, not intended to present a full development—but useful for thinking through what the core principles really are, and speculating how jurisdictions might converge on similar results if they took all three seriously.  Still, I wonder how much convergence there would be, given differences of opinion in specific cases over which licenses are relevant comparables; the utility of the top-down approach; and other issues that do not arise in every case but can be important in some of them, such as access-to-all versus license-to-all and the use of the smallest salable patent-practicing unit as the royalty base.  Just a few months ago, for example—after the editorial was published—in the Samsung v. ZTE dispute, a Chinese court determined that a six-year FRAND license for the relevant technology would be in the amount of $731 million, while the Munich Regional Court opined that a five-award license would be for $640 million, and the EWHC determined that a five-year license would be $392 million (see my blog post, As Many as Three Incompatible FRAND Judgments Before Breakfast).  Another issue is that, at present, some courts are more receptive than others to issuing injunctive relief in FRAND cases, and that possibility obviously impacts strategy in a big way—so for any convergence to take place, we might need to see a change of perspective on that issue, from one that sees FRAND-committed SEPs as just another kind of patent to one that recognizes, as Lord Justice Arnold states in this essay and has stated previously, that every SEP owner and every SEP implementer is, respectively, a willing licensor or willing licensee, as long as the terms are right.   

In related news, outgoing U.S. Representative Darrell Issa is quoted in MLex as recommending the issuance of an executive order forbidding U.S. courts from recognizing foreign judgments awarding global FRAND royalties or injunctive relief (“Unless there’s a US patent, unless it’s adjudicated by a US court, we are not going to respect foreign [court orders]”).  I’m not sure if there have been cases in which foreign courts have issued injunctions against the use of U.S. patents in the U.S., but Congressman Issa may have in mind the English courts’ practice of compelling implementers to choose between a domestic injunction and acquiescence in the court’s determination of global FRAND royalties.  Another possibility he may have in mind is that a court might award specific performance of the global license it determines to be FRAND (see my May blog post above), which I suppose would have extraterritorial impact even if directed only against a party over whom the court has personal jurisdiction.  Or maybe I'm just missing his point altogether.  In any event, I thank Rochelle Cooper Dreyfuss for bringing this development to my attention.

The $5.72 Billion Jury Award in Taction v. Apple

Readers probably have already heard that on Friday a jury awarded damages in the amount of $5.72 billion in Taction Technology, Inc. v. Apple Inc., No. 3:21-cv-00812-TWR-JLB (S.D. Cal.).  This case has been the subject of one previous Federal Circuit appeal, which resulted in a nonprecedential opinion in August 2025 vacating a summary judgment of noninfringement based in part on an erroneous claim construction.   As the Federal Circuit explained at that time, the patents in suit “share a common specification and relate ‘to tactile transducers that produce bass frequency vibrations for perception by touch,’ with each asserted claim “requir[ing] damping the moving portion’” of the apparatus.  Taction claimed that certain iPhones and Apple Watches with haptic (“the science of enabling interaction with technology through the sense of touch, including, for example, using vibrations”) technology infringed the patents in suit.  

Anyway, the case went to trial this month, and on Friday the jury found that Apple infringed claims 17 and 19 of U.S. Patent No. 10,659,844 and claim 16 of U.S. Patent No. 10,820,117; that Taction proved its damages to be $5,721,961,750; and that the infringement was not willful (so no risk of trebling, at least!).  This is the largest patent damages award in U.S. history—though as others have noted, stratospheric awards like this rarely survive intact, following post-trial motions and appellate review for possible substantive legal errors and/or errors specifically relating to damages calculation.   

I don’t know a great deal yet about the damages issues.  A quick review, however, of the parties’ trial briefs on damages (see here and here), the jury instructions, and a couple of pretrial evidentiary rulings reported on Westlaw (see 2026 WL 2608208 and 2026 WL 2325817) indicate, if I understand correctly, that Taction relied primarily on the “Corsair” license as a comparable, but that the district court excluded the royalty amount in the Corsair license, and the testimony of Taction's damages expert, for failure to adequately apportion the value attributable to the patents in suit in this case.  Taction's September 20 damages brief therefore instead relies on lay testimony that “the cost of ferrofluid required to implement the patented technology in the Corsair product was approximately 20 cents per unit,” and that this cost “is limited to implementing the patented technology and does not relate to the only other technology licensed,” so that "20 cents provides a minimum for a per unit reasonable royalty and, at the very least, provides a data point for the jury to consider in addition to the other evidence":  "[a] party would not pay 20 cents for just one component to implement the infringing technology unless the value that the technology provides exceeds that amount."  Apple counters that without a royalty amount from the Corsair license in evidence, or admissible evidence on how to apportion such a rate, there isn't enough here to justify anything more than nominal damages.  (Apple cites Rex Medical, L.P. v. Intuitive Surgical, Inc., 156 F.4^th 1289 (Fed. Cir. 2025), as precedent for an award of nominal damages, on the ground, contested by Taction, that that case involved “materially identical facts” including a failure to apportion.  For discussion of Rex on this blog, see here.)  Apple further argues that the testimony about the cost of ferrofluid doesn't overcome these problems, because "ferrofluid is not the claimed invention, and a contribution attributable to an unclaimed component is not an apportionment of the patents' value." 

Reports on Bloomberg, Law360, and ip fray provide some further background on the case, including that the plaintiff’s suit is funded by two related litigation financing entities. 

Update:  I should note that it is not immediately obvious to me how you get to $5.72 billion, even if you credit the plaintiff's argument about the cost of ferrofluid being a relevant reference point.  At 20 cents per unit, you'd have to sell over 28 billion units to get to $5.72 billion.  Apple surely sells a lot of iPhones and Apple Watches, but given earth's population of about 8.3 billion people, that would be about 3.44 products per person.  I suppose we will see what other evidence comes out post-trial and on appeal.