In a recent case, the decision of which is expected in April 2019, the Higher Regional Court of Düsseldorf (OLG) has now announced that it will further develop the boundaries licensing defence.
The question of whether the legal successor to a standard essential patent (SEP) is bound by the FRAND declarations of its predecessor is controversial. The OLG is expected to affirm this. The FRAND declaration is not only binding as such, but also with regard to the amount of a fair and reasonable royalty fee. The purchaser of the patent may not deviate from the licensing practice of his predecessor in title in terms of increasing the royalty fees. If this were to happen, the following licensees would be discriminated against compared to the previous license seekers.
The Higher Regional Court further emphasises that all licence agreements must be disclosed so that the potential new licensee can determine whether the offer submitted to him is non-discriminatory.
A change in licensing practice and licensing conditions (upwards) is only possible for the SEP holder if all licenses have expired and he then starts establishing a new, non-exploitative licensing regime.
Of particular importance is the finding of the Higher Regional Court that judicially enforced license conditions cannot per se establish a FRAND license standard. Court licensing conditions, which, for example, are fixed in a judgment or agreed upon under the pressure of court proceedings, must be disregarded for the assessment of the usual and reasonable license fees, since FRAND license fees need to be established “on the market” alone. The SEP holder therefore cannot change his licensing practice after a favourable court ruling and increase the license fees to the amount that was decided in the respective ruling if this exceeds the license conditions negotiated and concluded so far.
The latter is probably a reaction of the Higher Regional Court to an English court practice which determines the FRAND fees independently of the different license offers of the parties applying the court’s judicial discretion.
In the announced decision, appeal to the Federal Court of Justice (FCJ) will probably be admitted. Therefore, in addition to the already pending actions, another FRAND case will presumably arrive at the FCJ. For the further shaping of European law, it would be of tremendous importance if the FCJ would use one of these proceedings for anotherr referral to the European Court of Justice.
