New Papers on SEPs and the UPC

1. Matthias Leistner has published a two-part series in GRUR-Patent.  The first part is SEPs in the UPC-System: The Issue of Market Dominance after Huawei/ZTE, GRUR-Patent 2024, 272.  The second part is SEPs in the UPC-System: How the UPC should implement Huawei/ZTE, GRUR-Patent 2024, 328.  The abstract for both is:

This two-part article discusses how SEP disputes should be handled before the Unitary Patent Court. The first part addresses the double nature of the Huawei/ZTE framework for the enforcement of SEPs: It explains how the obligations for the enforcement of SEPs, laid down in Huawei/ZTE, equally follow from EU competition law as well as from the FRAND undertakings in conjunction with the Union law principle of good faith. The second part will discuss how the UPC should treat cases, where two generally willing licensees cannot reach agreement on FRAND terms and conditions. It will show ways how the UPC, based on the Huawei/ZTE case law, by way of an active case management could stimulate arbitration settlements and, as an ultima ratio, engage in the setting of FRAND terms and conditions thereby following the example of the English courts.

The second article presents an interesting analysis of how the UPC could wind up determining FRAND royalties.

2. Enrico Bonadio and Magali Contardi have published The Unified Patent Court and standard essential patents, 46 EIPR 571 (2024).  Here is the abstract:

The article wants to verify what role the UPC may carve out in the SEPs landscape, especially in relation to FRAND determination and availability of injunctions. This study is useful as litigants have already started disputing SEPs before the UPC. In Section II we expand on specific FRAND issues the UPC may soon be called to decide, including whether the new court would push or not for royalties based on a whole SEPs portfolio; the global licence approach; whether FRAND royalties should be capped at the value of the technology itself before the standardisation decision; whether the fee should be based on components or on the final end-product; and the comparable licences methodology. Section III then shifts the analysis to injunctions and the proportionality test. Section IV concludes.