Stellbrink & Partner Patent Attorneys

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Standard-Essential Patents & FRAND Licenses

In the recent past, standard-essential patents (SEP) and FRAND licenses have played an important role in many patent infringement proceedings. FRAND licenses are licenses that are fair, reasonable, and non-discriminatory.

The basic rationale is the following: There are some patents protecting a technological standard, e.g., a patent that is essential for a mobile communication standard. That is, anyone using this mobile communication network has to make use of this patent. Such patents would grant the patentee a disproportional amount of power if the patentee could exclude any other party from using this patent. This is why the patentee is obliged to grant a FRAND license to any party willing to accept such a license. In particular, the patentee of a standard-essential patent cannot successfully assert a cease and desist claim in court if the other party is willing to accept a FRAND license.

While the above illustrates the general idea, there have been numerous questions as to which obligations the patentee and the user of an SEP have to meet to fulfill their requirements relating to the FRAND license and to the licensing negotiations. For Germany, some of these questions have been answered by recent case law, some of which will be reviewed in this article.

One of the most fundamental decisions relating to SEP and FRAND was issued by the European Court of Justice (ECJ) with its judgement C-170/13 dated July 16th, 2015. The ruling concerned the circumstances under which the patentee of an SEP can assert cease and desist claims in court proceedings. As already stated, in general, the patentee is not allowed to do so if the alleged infringer is willing to take a license and does not delay the licensing negotiations.

In that regard, the patentee and the alleged infringer have to follow a certain procedure during the licensing negotiations.

1. Before asserting the cease and desist claim in court proceedings, the patentee has to inform the alleged infringer of the patent claim (patentee informing alleged infringer).

2. The alleged infringer then has to request a license under FRAND conditions within a short time (FRAND request).

3. In turn, the patentee has to make a FRAND offer including details as regards the royalty rate and its calculation (FRAND offer). A recent decision by the Higher District Court Düsseldorf also states that the patentee has to substantiate how the asserted patents are infringed. This includes references to the respective standard and claim charts (see OLG Düsseldorf, I-15 U 66-15, decision of 17. November 2016).

4. a) The alleged infringer can either accept the FRAND offer (FRAND acceptance) OR

4. b) The alleged infringer can make a counter offer complying with FRAND conditions (FRAND counter offer).

If this is the case, and the patentee does not accept the counter offer, the alleged infringer has to render account for the usage of the patent and furnish a respective security.

If the alleged infringer complies with their duties (including a FRAND request in due time and a FRAND acceptance or counter offer), the patentee cannot assert the cease and desist claims in court.

The above considerations (and further considerations on the exact case and more specific case law) will have to be taken into account by anyone wanting to assert a SEP and by anyone being attacked with a SEP.

Stelbrink & Partner LogoOf course, the above is just a very short summary of some of the recent decisions relating to SEP and FRAND licenses in Germany, and that many others exist, providing further details on individual questions. However, mentioning all of them would render this article too complex, as it is only intended to provide an introduction and a high-level summary. It is generally noted that this article can never replace individual legal counselling. If you have any question relating to SEP and/or FRAND licenses, please feel free to contact us at mail@stellbrink-partner.com. We are always happy to help you.

 

Bumpy road ahead for the unitary patent

The unitary patent has been in the works for a number of years. The basic idea is simple: allow for a central system of patent litigation for patents in Europe (as opposed to litigation being tied to each of the individual countries where a European patent is validated). Based on the agreed rules, a new court would be established having a central division in Paris, London, and Munich.

For the unitary patent to come into effect, France, the UK and Germany must ratify the agreement. France has done so in 2014 already. Ratification by the UK has been called into question after the Brexit vote, but since then there have been statements by the members of the UK government indicating that they are still open to ratifying the agreement. On June 13th, a new obstacle to the implementation of the unitary patent emerged. Germany, which was well on course to ratifying the agreement, put a halt to it in view of a complaint from an unnamed individual insinuating that the ratification would violate German law. The German constitutional court in Karlsruhe put the ratification process on hold while it investigates the complaint.

Although accelerated proceedings are expected, the process is likely to further delay the implementation of the unitary patent and the start of operation of the Unified Patent Court. It now seems more and more unlikely that the courts can start reviewing their first cases in December 2017, as originally planned. With further delay of German ratification, the UK’s Brexit negotiations can also further affect the start of the unified court’s operations. We will keep you updated on any further developments in the long and difficult story of the unitary patent.

Patent Infringement and Patent Invalidity Proceedings in Germany

 

As regards proceedings relating to patent infringement, Germany is the number 1 jurisdiction in Europe selected by patentees. In addition to moderate costs, the quality of the judges, and the predictability of the outcome, the German court system plays a role in this choice.

Germany has a “bifurcated” system. There are civil courts (most notably Düsseldorf, Mannheim and Munich) that are responsible for patent infringement proceedings (in the following: patent infringement courts), and there is the Federal Patent Court based in Munich that is responsible for patent invalidity proceedings (also known as patent nullity proceedings).

One main difference to other jurisdictions is that the patent infringement courts do not decide on the validity of the asserted patents. This has significant implications for the initially paid court fees. The court fees have to be initially paid by the party starting the proceedings. That is, the patentee has to initially pay the court fees when starting the infringement proceedings. On the other hand, the alleged infringer (or any party seeking to invalidate a patent) has to initially pay the court fees for the patent invalidity proceedings.

Another important consideration relates to the timing of the proceedings. First instance infringement proceedings typically last for about 1 year. First instance patent invalidity proceedings typically last for about 2.5 years. That is, one usually receives a ruling on patent infringement before receiving a ruling on patent validity. This may be most relevant for the cease and desist claim, as it may happen that (subject to a security by the plaintiff) the patent infringement court orders the alleged infringer to cease and desist from using an invention after one year, and that the patent is only found to be invalid 1.5 years later.

In light of this, there is the concept of staying the infringement proceedings. If the patent infringement court arrives at the conclusion that it is likely that the asserted patent will be invalidated in invalidity proceedings, it can stay the infringement proceedings. However, the patent infringement courts are generally reluctant to grant such a stay of proceedings, and the overall statistics is that only about 10% to 20% of the patent infringement proceedings are stayed.

All these aspects have to be taken into consideration when deciding whether or not to start patent infringement proceedings, in which country to start such proceedings, and which court to use for such proceedings.

Corresponding considerations apply for the defendant as well –the alleged infringer also has to take the above timings and probabilities into account when developing a defense strategy.

Stelbrink & Partner LogoWe note that the above article is a general outline of patent infringement and invalidity proceedings in Germany. Such an article can never replace individual legal counselling. If you have any questions relating to patent infringement and patent invalidity proceedings in Germany, please feel free to contact us at mail@stellbrink-partner.com. We are always happy to help you.

The Year of the Unitary Patent?

Italy is 12th country that ratified the Unified Patent Court (UPC) agreementOn Friday, February 10th, Italy has ratified the Unified Patent Court (UPC) agreement.

As of now, the deal has been signed by 12 countries including France. As we previously wrote, approvals from 13 countries including the UK, France and Germany are needed for the UPC to come to fruition. Germany has said that they will ratify the agreement, provided so does the UK.

After the Brexit vote in June 2016, strong doubts were raised regarding the future of the UPC. However, in November 2016, the British minister for Intellectual Property, Baroness Neville-Rolfe reiterated the UK’s commitment to the UPC and the Unitary Patent. She then stepped down in December 2016, prompting questions on whether her assurances would be honored by her successor as IP Minister, Jo Johnson. Mr. Johnson is the younger brother of the UK’s new Foreign Secretary, former mayor of London and a staunch Brexit supporter Boris Johnson. When asked on his stance regarding the UPC, Mr. Johnson claimed that it may form part of the wider Brexit negotiations.

Meanwhile, the UPC committee has announced that the court will start operations in December 2017. Stellbrink & Partner will keep you updated on the status of the Unitary Patent in these tumultuous times.

From theoretical physicist to patent attorney – my first year as a patent attorney trainee

Whaaaat? Excuse me? Come again? Ohhh… Are the most common reactions when I tell people what I do. Patent attorney trainee or Patentanwaltskandidatin are not job titles that just roll off the tongue – in fact, it took me a lot of practice to master the second one. My elderly Bavarian neighbours have no idea what a patent attorney is, let alone a Kandidatin to become one. My family and friends mostly heard this job mentioned as a specific subset of a lawyer. In light of this, they often ask me: “Isn’t it boring? Don’t you have to do a ton of paperwork and stay up all night to memorize dusty ancient law manuscripts? Don’t you miss the excitement of solving problems and working with other scientists?” The answer to all three of those questions is no. No, it is not boring, the work is dynamic, and provides surprisingly many outlets for self-expression. No, all-nighters were never my thing, the manuscripts are all available online for reference, and no one actually knows them by heart. No, I don’t miss intellectually stimulating work and people, because I never left them behind. Problem-solving is an integral part of a patent attorney’s job – how else would we figure out the details of a complex patent application? Discussing the specifics of patent applications with inventors is not at all unlike the stimulating discussions with fellow scientists so valued in academia.

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Contemplating a most certainly very important case in the office.

So what exactly have I been doing for nearly a year now? The short answer is, a lot. The long answer could fill a book, so here is the shortish one. I read scientific literature on robotics, algorithms, and statistics to better understand the fields our clients are working in. I held technical discussions with inventors to get a better grasp on their ideas. I travelled to visit our clients on site and see how they do their magic. I wrote patent applications, got feedback on them from my bosses, the patent attorneys, as well as from clients, rewrote and improved my work. I did searches: prior art searches, freedom to operate searches – done to provide clients with an overview of what is already known in their field of operation or to determine whether they can bring their product to the market in a particular country. I went to oral proceedings – the most intense, yet the most rewarding part of a patent attorney’s job, where the fate of a granted patent can change, where decisions bearing enormous financial impacts for clients are made, where the goal is to convince the members of the examining, opposition or appeal divisions that your case is logically sound and your client is in the right. I estimated patent portfolio budgets, took part in strategic discussions concerning intellectual property and delivered IP landscape analyses. I learned to use several docketing systems – special programs patent attorneys use to keep track of all the cases, clients and, most importantly, deadlines. I struggled with the online patent application submission system of the European Patent Office, and called them to clarify things without restraint (they were very nice about it).

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Posing with the cutest invention ever.

It was not all work work work though. I had a lot of fun having lunch with my colleagues and discussing our lives or latest vacation plans. I was a fervent Germany supporter during our office football viewing parties (a real rite of passage in Germany). I gave a talk about my area of specialization in physics, cosmology, to my colleagues and friends, and we proceeded to watch Wall-E (our office is famous for its bi-monthly-or-so lecture-and-movie nights). I went to dinner with clients and had a blast talking about politics, recent events, history, technology…

So you see, if I had to describe my job in one word, I would use the opposite of “boring”, I would use “exciting”. It has been an amazing year, and I am very much looking forward to continue my training as I keep moving forward on the long and winding road towards the title of a European Patent Attorney. And maybe a German Patent Attorney as well, if I succeed in an epic fight against Bureaucracy, Rules and Language (German is hard!), but this is a story for another day.

Our client Starship Technologies Revolutionizes the Transport of Goods

The Estonian Start-up Starship Technologies developed a self-driving robot that makes the transport of goods not only faster and cheaper, but also more eco-friendly. 

CmsMIelXYAAxhf7.jpg-largeStarship Technologies is an internationally oriented start-up established by the Skype co-founders Ahti Heinla and Janus Friis. Their vision is to effectively and drastically reduce the costs, delivery time and ecological impact of deliveries. While the American competitors Google and Amazon test drones, the Starship robot drives on streets and sidewalks to its customers. This results in a key advantage: equipped with an integrated navigation and obstacle detection system, the robot moves autonomously without being a danger for other traffic participants. Nevertheless, staff members are able to interfere at any time, to see the surroundings from the perspective of the robot, and even to communicate with other people through the robot. Unlike drones, these robots don’t need to show consideration for air traffic and therefore save substantial effort regarding safety and other legal issues.

As already mentioned, the start-up is focused on the last important mile that the parcel travels from the warehouse to its customer. This will only cost 10% of the current price and will provide more convenience to the client. The robot will be able to carry two grocery bags’ equivalent worth of deliveries. The delivery will take five to thirty minutes and the customer can choose a narrow time slot for it. In the meantime, the route of the robot can be monitored with an app in real time and the delivery is protected from theft because the robot can only be opened by the customer through the app.

It is also important for the company that no more polluting carbon dioxide will be emitted. The robot is battery-powered and needs less energy than a normal light bulb.

Cmq2OX2XEAAx718.jpg-largeSince Starship announced the testing program for their self-driving delivery robots with the largest European food delivery company Just East, leading German parcel delivery company Hermes, leading German retailer Metro Group, and London food delivery startup Pronto.co.uk on 6th July, the reaction in the press has been enormous: over 300 articles in print, online and TV have reached more than 450 million people around the world! WIRED UK, Forbes, BBC News, MIT Technology Review, The Independent, Daily Mail, Süddeutsche Zeitung and many more spread the message about the start of a new era in the revolution of delivery.

Stellbrink & Partner is pleased to be a part of that revolution and very happy about the rising success of our client.

Stellbrink & Partner’s membership in the friends’ association of the Stiftung der Deutschen Wirtschaft

Stellbrink & Partner joined Stiftung der Deutschen WirtschaftWe are pleased to announce our membership in the friends’ association of the Stiftung der Deutschen Wirtschaft.
Click here for more information.

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