IPRs and Standards -IPRs and Standards -Balancing Interests of Licensors Balancing Interests of Licensors and Licenseesand Licensees

Claudia Tapia Research In MotionResearch In Motion

14. October 200914. October 2009

NEW ENTRANTNEW ENTRANT

Ref.: German Federal Supreme Court, BGH, Orange Book Standard 05 May 2009,

KZR 39/06

COMPULSORY LICENSE DEFENSE under cartel law against

the patent owner’s request for injunctive relief is POSSIBLE

PREREQUISITES:

BGH – Orange Book Standard caseBGH – Orange Book Standard case

Licensee may make unconditional offer of concrete percentage

Licensee thinks 1% is ‚reasonable‘ DILEMMA

COURT allows Licensee: unconditional offer to conclude a

license agreement the patentee determines the amount of

royalties according to his own reasonable discretion

BGH – Orange Book Standard caseBGH – Orange Book Standard case

BGH – Orange Book Standard caseBGH – Orange Book Standard case

Licensee ask court examine if licensor has determined

rate at his reasonably exercised discretion (Sec. 315 CC)

BGH – Orange Book Standard caseBGH – Orange Book Standard case

SUGGESTIONAssuming Y thinks 10% is not reasonable

BGH – Orange Book Standard caseBGH – Orange Book Standard case