Abstract
This article examines interim global SEP licence declarations in English FRAND litigation and the defensive response of German courts and the Unified Patent Court. From the perspectives of intellectual property law and private international law, it argues that such declarations may operate as an “English torpedo”, giving English litigation practical priority over foreign proceedings. They place SEP owners in a willingness trap: either accept an interim global licence that provides implementers with a licence defence in infringement proceedings elsewhere, or refuse and risk being characterised as unwilling licensors. The article contrasts the UK interim declarations with European anti-interference orders grounded in territorial patent enforcement, access to courts and EU competition law. It concludes that, absent consent or a recognised jurisdictional basis, security or escrow should generally be preferred to non-consensual interim global licensing.
Key Takeaways
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Interim global licence declarations in UK SEP litigation may operate as an “English torpedo” by placing SEP owners in a willingness trap that gives English proceedings de facto priority over foreign patent adjudication.
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Neither the applicable SDO licensing undertaking nor competition law, without more, provides the basis to impose on an SEP holder a pre-trial obligation to enter a provisional worldwide licence.
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BSH Hausgeräte v Electrolux reduces the institutional vacuum justification for English interim global declarations by showing that the Brussels framework can concentrate cross-border infringement claims in general jurisdiction while preserving territorial validity jurisdiction and non-interference discipline.
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European anti-interference measures are not counter-torpedoes where they are narrowly confined to protecting a concrete adjudicative function before the issuing court and do not suppress legitimate foreign FRAND or contractual claims.
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Where the immediate problem is continued SEP use pending FRAND adjudication, and consent or general jurisdiction do not support an interim global licence declaration, the ordinary interim response should be security, escrow or an interim payment without licensing effect because such measures: 1) protect the SEP owner against uncompensated use of its patented technology, 2) provide evidence of the implementer's willingness to enter into a FRAND license, and 3) preserve each court's ability to determine the dispute before it.
