GEMA Type Agencies as a solution for FRAND?

With the advent of 5G and the internet of things, the FRAND licencing of standard essential patents (SEPs) is of ever-growing importance. Disputes concerning SEPs pose highly complex challenges to state court systems and the resolution of FRAND disputes by way of arbitration or with the help of pools gain traction not only as an alternative, but also as an addition to state court litigation. The European Commission set up a SEP expert group, parts of which seem to favour a more collective approach, in particular an agency approach to FRAND licensing. To discuss whether and to what extent agencies might help to resolve FRAND issues, the Munich IP Dispute Resolution Forum organized, on 12th November, 2019, an event at the the DPMAforum (Deutsches Patent- und Markenamt). The event gathered high level presentations and panels, consisting of judges, academics, lawyers and business representatives and was opened by speeches from Cornelia Rudloff-Schäffer (President, DPMA) and Prof. Dr. Peter Georg Picht (Director CIPCO, University of Zurich). It was mainly organized and moderated by Klaus Haft (Partner, Hoyng ROKH Monegier).

Prof. Dr. Christian Czychowski (Partner, Boehmert & Boehmert) provided the participants with an overview of the GEMA concept and other teachings from Copyright law. GEMA is a collecting society, which provides an interesting model for the organisation of patent pools and licensing agencies in the FRAND context.

Options to remedy FRAND issues could be located also in a previous step. The European Telecommunications Standards Institute (ETSI) produces globally applicable standards for ICT-enabled systems, applications and services deployed across all sectors of industry and society.

Judge Fabian Hoffmann (Judge of the patent division of the German Federal Supreme Court - BGH) focused on key features of how a combined agency/pooling approach could tackle the FRAND problem.

Instead of opting for the introduction of an agency, a platform could be a suitable approach to avoid or resolve FRAND disputes. Luke McLeroy (Senior Vice President of Business Development, Avanci) addressed the platform approach.

As the event's concluding part, a panel discussion with all speakers and, additionally, Judge Matthias Zigann (Presiding Judge, Regional Court Munich I), Dr. Clemens Heusch (Head of European Litigation, Nokia) took place.