Significant judgment handed down by UK Court of Appeal regarding telecommunication patents and FRAND licensing

Written on 13 Nov 2018

In October 2018, the UK Court of Appeal upheld the first instance judgment of Mr Justice Birss in a case for Unwired Planet, concerning the way in which patented technology essential to telecommunication standards (e.g. 3G-UMTS, 4G-LTE) is licensed to mobile phone manufacturers (‘implementers’). Such patents are called Standard Essential Patents or ‘SEPs’.

Osborne Clarke acted as co-counsel for Unwired Planet.

The judgment stated that global licensing of SEPs is FRAND (fair, reasonable and non-discriminatory) and aligns with how such licensing takes place across the industry. The Court of Appeal also held that FRAND obligations can be met if a SEP owner offers a worldwide licence. However, should the implementer refuse to take such a licence, it could be subject to an injunction to prevent continued patent infringement in the UK.

The Court of Appeal also upheld the judgment of Birss J on issues relating to competition law.

The Court of Appeal judgment sets out a blueprint for how standard essential patents should be licensed to implementers and confirms that a global licence is FRAND. This judgment takes a pragmatic approach. It will help to enable efficient licensing discussions for both licensees and global patent holders.