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.