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Lisa Kimmel, Oct 14, 2015
Courts and antitrust agencies across the globe continue to evaluate the role of antitrust enforcement in patent-licensing disputes between technology users and firms that have made commitments to provide access to patents essential to implement industry standards on fair, reasonable, and nondiscriminatory terms. In recent years, enforcement agencies have focused in particular on the scenario where, typically after efforts to conclude a license fail, the SEP owner seeks to enforce its patent rights by filing an infringement claim that includes a request for an injunction as a remedy.
Recently, both the Japanese Fair Trade Commission and the Canadian Competition Bureau have issued draft antitrust guidelines for intellectual property that include first-time guidance on how each jurisdiction will evaluate whether a SEP owner violates the antitrust laws by seeking an injunction against a firm implementing the standard. As discussed below, while the CCB envisages that antitrust liability be grounded in a showing of at least likely to harm competition, the JFTC contemplates a standard of per se liability for seeking an injunction against a firm that is “willing to take a license” on FRAND terms.
In this note, I describe the two proposals and argue that if antitrust law has any role to play in SEP licensing disputes in foreign jurisdictions, the risk of liability should hinge on more than a determination of whether a putative licensee is—or is not—willing to accept a license on FRAND terms, or even more broadly whether the SEP owner has met its FRAND obligation. That commercial dispute alone should not implicate the antitrust laws. Instead, agencies should require proof that the SEP-owner’s conduct had an actual or likely anticompetitive effect. Otherwise, the threat of antitrust liability risks harm to incentives to innovate and contribute technology to standards, with no offsetting benefits to competition.