| This doctoral thesis focuses on the study of the legal nature and effect of FRAND clauses in the field of standard essential patents.The legal nature analysis and effect interact each other,and the solid legal nature study can determine the legal effect it has on the parties.Based on the determined legal effect,it can ultimately affect judicial practice.Therefore,a combination of the two is necessary to demonstrate the dual effects of theory and practice.Therefore,this article takes both as the research objects.At present,the academic community has different views on the legal nature analysis of FRAND clauses,including constituting an offer,constituting an invitation to offer,constituting a unilateral legal act,constituting a third-party beneficiary contract,constituting an implied license,being an obligation of good faith,and being a compulsory contracting obligation.This article refutes the advantages and disadvantages of the above theories,and based on the key research of ISO,IEC,IEEE,ITU,the world’s five major standard organizations that hold over 90% of the necessary patents for global standards ETSI’s FRAND clause related documents,from the perspective of factual interpretation,explain that the formulation of FRAND clauses is a legal action taken by both the standard organization and patentee.In addition to this legal relationship,the negotiation process of the standard essential patent license contract arises between patentee and the implementer,so the FRAND clause is not a legal relationship unilaterally generated by patentee,nor is it a legal relationship between patentee and the implementer.It is in fact derived from the relationship between the standards organization and patentee.Therefore,based on factual analysis,this article believes that the FRAND clause is a third-party beneficiary contract,which is a contractual legal relationship between patentee and the standards organization that is beneficial to the implementer.However,at present,the theory of third-party beneficiary contracts in the academic community is not yet mature,and the argument needs to be strengthened,especially regarding the corresponding obligations assumed by the implementer in the licensing relationship and the requirement of "third-party pure profitability" required by the third-party beneficiary contract,which is not fully compatible.Therefore,this article is mainly based on case studies in the United States and the United Kingdom,as well as the purpose interpretation of standard organization licensing documents,system interpretation,and textual interpretation,to improve the theory of third-party beneficiary contracts to the theory of "conditional real third-party beneficiary contracts".Firstly,clarify the FRAND clause as a true third-party beneficiary contract,meaning that the implementer,as a third-party beneficiary,can independently request patentee to fulfill the FRAND obligations;Secondly,by analyzing the system and historical interpretation of the "reciprocity" clause in the licensing documents of the standard organization,it is found that this clause can serve as an effective condition attached to the FRAND clause,and the content of this condition is the FRAND commitment made by the implementer during the licensing process.Therefore,it can be inferred that the relevant licensing obligations of the implementer do not originate from third-party beneficiary contracts,but rather from the content specified in the conditions attached to the contract,It is a relevant legal fact beyond the legal relationship of the third-party beneficiary contract,which can make the characterization of the FRAND clause as a "true third-party beneficiary contract with conditions" no longer have any theoretical obstacles in legal application,and become the best conclusion for characterizing the FRAND clause.Based on this legal nature analysis,this article interprets the effectiveness of the FRAND clause.The FRAND clause,as a contract term,has ambiguous content and agreement.Therefore,when interpreting,it is necessary to explore the true intentions of the other party,namely the standard organization and patentee,based on textual interpretation,purpose interpretation,and system interpretation,combined with the methodological path of the contract loophole filling rule.At the same time,based on the commercial practices of both contracting parties,explore the content of the terms.In the specific context of the FRAND clause,standard necessary patent judgments,license negotiations,etc.in various jurisdictions around the world belong to a broad range of business practices.Therefore,its effectiveness can be interpreted from the perspectives of national judgments,historical facts of license negotiations,and the legal sources of the FRAND clause.Based on relevant judgments from various countries,this article finds that there are two legislative approaches to interpreting the effectiveness of FRAND clauses: monopoly law and contract law.Overall,the evaluation is based on the constraints imposed on patentee and implementer in terms of licensing behavior,licensing fees,and prohibition issuance.Therefore,this article also demonstrates the effectiveness of the FRAND clause from these three perspectives.Starting from historical origins,this article finds that the effectiveness of the FRAND clause originates from the principles of fairness in Civil law and reasonableness in Anti-trust law and is the result of standards organizations transforming relevant legal principles into party autonomy.Therefore,this article provides a further explanation of the FRAND clause from the perspective of the principles of fairness in civil law and reasonableness in monopoly law.Thus,it can be concluded that the FRAND clause requires(1)the patentee to diligently and in good faith conduct licensing negotiations and provide detailed and sufficient licensing information required by the implementer during the negotiations.(2)the patentee is required to exclude the standard value of licensing consideration and consider specific circumstances.(3)the patentee is not allowed to use prohibitions to exclude or restrict competition.At the same time,based on the effective provisions of FRAND terms,the implementer also has relevant obligations because of the reciprocity licensing commitment made in the early stage of licensing.Based on the above analysis and demonstration,this paper finally proposes to build China’s standard essential patent FRAND clause specification system,and the FRAND clause specification system with judicial interpretation and joint regulations of various departments as the core gives play to the relevant effect of FRAND clauses in the field of standard essential patent licensing.Among them,the judicial interpretation clarifies the nature,effectiveness,and trial criteria of the FRAND clause.Based on the effect of the judicial practice response,it will gradually promote the implementation of multi sectoral joint regulations and continue to supplement the establishment of the overall FRAND clause specification system from the administrative perspective.The specific research is divided into five chapters.Chapter 1 raises questions.Firstly,the legal nature of the FRAND clause is unclear.The article analyzes the different perspectives on legal nature analysis in judicial practice in China,the United States,the United Kingdom,Japan,and Germany based on contract law or monopoly law.Secondly,the effectiveness of the FRAND clause is unclear.The effectiveness mainly focuses on two aspects: the conditions for granting the FRAND ban and the determination of FRAND licensing behavior.In terms of injunctions,the FRAND clause has two paths: contract law and competition law,which affect the issuance of injunctions.The United States and Europe judge the ban from two different paths,but there are signs of convergence.Regarding the impact of the FRAND clause on license fees,countries interpret the FRAND clause as obtaining consideration for the value of the patent itself.However,there are many differences in courts across countries when stripping the standard value and determining the value of the patent itself.Subsequently,Chapter 1 analyzed the relevant documents of the five major standard organizations ISO,ITU,IEC,IEEE,and ETSI.Starting from the entire standard development process and analyzing the FRAND clause,it will be found that the FRAND clause is a document led and generated by the standards organization.There are two legal relationships related to the FRAND clause that need to be clarified.One is the legal relationship between the standards organization and patentee to sign corresponding license statements based on the formulation of standards.In this legal relationship,the FRAND clause is generated based on license statements and other documents;Secondly,there will be subsequent license negotiations between patentee and the implementer.Patentee will conduct license negotiations with the implementer based on the relevant obligations in the license statement.In the process of reaching the license contract,the FRAND clause will be applied.These two legal relationships related to the FRAND clause are the key logical starting point for the subsequent argument in this article.The second chapter develops and discards the mainstream viewpoints both domestically and internationally.Among them,the theory focusing on unilateral declaration of will includes offer theory,offer invitation theory and unilateral legal act theory.The above opinion focusing on unilateral declaration of will(1)wrongly excludes the de facto status of the standards organization.The intellectual property policy and patent information of ETSI and FRAND license documents,the implementation guidelines for public patent policies shared by IEC/ISO/ITU,and the intellectual property policy of IEEE Standards Committee are the textual sources of FRAND clauses,and their formulation cannot avoid the participation of standard organizations;(2)The connotation of the licensor’s declaration of will cannot be accurately explained.This declaration of will originates from the standards organization and cannot be reasonably explained from the perspective of the licensor.The theories focusing on both parties’ declaration of will include the contract of thirdparty beneficiary and the implied permission theory.The third-party beneficiary contract theory is good at coordinating the tripartite relationship,but there are still theoretical issues to be explained.The main problems are whether the third-party beneficiary contract has broken through the Privity of contract,why the current theory of consideration has not been unified,whether the FRAND clause conflicts with the pure profitability,and the nodes for the third party to obtain benefits are unclear.The implied permission theory does not comply with the content of the FRAND clause and goes against the mainstream international viewpoint.The theories that focus on the legal obligations of the patentee include the theory of good faith and the theory of compulsory contracting.The theory of good faith violates the application principle of the principle,and the theory of compulsory contracting has no basis in law and goes against the mainstream international viewpoint.The third chapter analyzes the rationality of characterizing the FRAND clause as a true third-party interest contract with conditions.Firstly,clarify the FRAND clause as the situation where patentee chooses the FRAND option and the reciprocal sub option,and include all clauses related to FRAND interpretation in the intellectual property(IPR)policy documents of the Standards Organization.At this point,the FRAND clause can be independently characterized as a true third-party benefit contract.The FRAND clause is provided by the standards organization to patentee.During the standard development period,the standard organization will make separate offers and commitments with patentees,and then reach a contract.And this characterization does not break through the Privity of contract.The second paragraph of Article 522 of the Civil Code provides the existing legal basis for the true thirdparty beneficiary contract.Based on the theory of public law of private law,consideration of public interests can also appropriately break through the Privity of contract.And specific third parties in the industry in the future also meet the requirement of contract certainty.In addition,third-party beneficiary contracts have eligible consideration.Patentee has undertaken disclosure obligations and FRAND licensing obligations,which correspond to the obligation of the standards organization to include patents in the standards and databases in accordance with regulations.In addition,the true third-party beneficiary contract bears the conditions for its effectiveness.The ETSI,IEC/ISO/ITU,and IEEE documents respectively state that "this irrevocable commitment is conditional on the implementer’s consent to reciprocity","the patentee’s willingness to grant reciprocity",and "this license will include a requirement for reciprocal licensing".Starting from the context,purpose,and system interpretation,the conditions naturally require the implementer to commit to fulfilling the FRAND license negotiation obligation.And reciprocity,as a condition for the effectiveness of third-party benefit contract,protects the pure benefit of patentees in the FRAND clause,which is to fulfill a separate commitment outside the legal framework of the FRAND clause.As a legal act,a contract with effective conditions is also supported by the provisions of Article 158 of the Civil Code of China.Chapter 4 discusses the effectiveness of the FRAND clause based on legal nature analysis.The standard essential patent FRAND clause needs to be interpreted based on the contract law approach and the rule of filling contract loopholes.First of all,although the FRAND clause does not directly affect the implementer,the reciprocity license makes FRAND effective and makes the implementer bear obligations outside the contract.The connotation of the reciprocal obligation of the implementer is to diligently negotiate in good faith and obtain permits in a timely manner.(1)When licensing negotiations are smooth and disputes are effectively resolved,it is necessary to promptly accept FRAND consideration;(2)When license negotiations reach a deadlock,actively seek third-party dispute resolution or deposit license fees.After the contract takes effect,the patentee has a FRAND obligation based on the effective contract.The core lies in restoring the licensing status of both parties before being included in the standard.Rights holders should diligently and in good faith conduct licensing negotiations.Detailed and sufficient licensing information required by the implementer needs to be provided during the negotiation.In addition,the licensing consideration proposed by patentee needs to exclude standard value and consider specific circumstances.Among them,non-discrimination does not mean a unified pricing for all implementers,and license rates need to be adjusted according to specific circumstances for different products and industries.The organic unity of nondiscrimination,fairness,and rationality,and the appropriate adjustment of tariff rates,is its inherent connotation.The FRAND clause also to some extent restricts the patentee from obtaining an injunction.Rights holders shall not use prohibitions to exclude or restrict competition.Because the ban may have the effect of excluding and restricting competition in the field of standard essential patents,it is therefore restricted by the FRAND clause.However,the FRAND clause does not exclude injunctive relief based on the legitimate rights and interests of patentee.When patentee fully fulfills the FRAND obligation,but the implementer fails to fulfill the reciprocal obligation,an injunction can be issued.If the implementer refuses to obtain the FRAND license,significantly delays the license,or appears diligent but the substantive counteroffer is not FRAND,it can be considered as a failure to fulfill the obligation of reciprocity.At this point,the license is deadlocked,and all the obligations that patentee can fulfill have been fulfilled.The license cannot be achieved solely due to the reasons of the implementer.At this point,the legitimate rights and interests of the patentee cannot be realized without the help of injunctive relief,and the balance theory leans towards protecting the legitimate rights and interests of the patentee.Therefore,at this time,injunctive relief can be approved accordingly.Chapter 5 proposes suggestions for improving the dispute system of standard essential patent FRAND clauses based on the analysis of the above FRAND clauses.Build a standard system of FRAND clauses centered on judicial interpretation and joint regulations of various departments.In the system improvement path,the judicial interpretation path is the more appropriate improvement path for the current interpretation of FRAND terms.Maintain legal flexibility in dealing with standard essential patent issues.Because the competition in the field of standard essential patents is by no means ordinary market competition,it may be related to the survival and development of the entire industry of a country.There are many considerations of national and political interests behind it.Countries have their own preferences for patentees and implementers at different stages,but these preferences are crucial to their economic,technological,and market position at that time.Therefore,this article suggests the establishment of the "Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Standard Necessary Patent Dispute Cases".Of course,the regulation of FRAND terms must not be limited to the judicial field.In the administrative field,the Intellectual Property Office and the Monopoly Office should also take action.However,their legislative coordination requirements are high,and they need to be summarized and formulated after the judicial interpretation plays its role.At the same time,this paper clearly puts forward the criteria for judging the validity of FRAND clauses of standard essential patents in licensing behavior,FRAND rate,and issues related to injunction issuance,and based on this standard,puts forward four legislative suggestions on the preliminary specific clauses in judicial interpretation.(1)The legal nature clarity of the FRAND clause.The "fair,reasonable,and nondiscriminatory" provisions in the field of standard essential patents can constitute a third-party benefit contract between the patentee and the standards organization,which may be subject to effective conditions based on the specific content of the terms signed by the patentee and the standards organization.The standard implementer,as a third-party beneficiary of the contract,may file a breach of contract lawsuit with the court based on the patent holder’s breach of contract.(2)The construction of a framework for goodwill negotiations.Patentees and implementers of standard essential patents are obligated to comply with the following FRAND licensing negotiation framework based on the FRAND terms and their effective conditions.The first step is for the patentee to indicate to the implementer the basic information of the standard essential patents to be licensed,including a patent list,and to explain the way and products in which they are infringed.The patentee shall submit an infringement notice letter to the implementer and inform the implementer of their FRAND obligations based on their commitment to the standards organization.They are willing to license the standard essential patents involved in infringement to the implementer in a FRAND manner.Step 2: After receiving the letter from patentee,the implementer needs to conduct research and evaluation in a timely manner.If they are willing to negotiate the license,they should indicate their willingness to conclude the license agreement in accordance with the FRAND terms to the implementer within one month of receiving the letter.Step 3: After receiving the implementer’s response letter,patentee needs to send a specific FRAND license written offer to the implementer within one month,detailing the license fee and its calculation method.If both parties need to sign a confidentiality agreement,it is necessary to sign a confidentiality agreement within a reasonable period recognized in the industry before the execution of the aforementioned terms,and the signing of the confidentiality agreement shall not be used to intentionally delay time.Step 4: After receiving the above written offer,the implementer shall clearly indicate in writing whether to accept the declaration of will of the offer to the licensor within two months.If the offer is not accepted,it is necessary to clearly explain the detailed reasons for the non-acceptance or propose a counteroffer that it considers complying with the FRAND terms.Step 5: If patentee and implementer fail to reach a licensing agreement,repeat steps 3 and 4 and conduct another round of offer negotiation.During this period,both parties need to actively cooperate with the other party’s reasonable requirements and provide necessary information for license negotiations,such as the patent claims of patentee,the sales location of the implementer’s related products,the price,sales volume,and other accounts.Both parties shall comply with their confidentiality obligations during the negotiation process in accordance with the signed Non-Disclosure Agreement(NDA).Step 6: If the license has not been reached,either party can continue the offer negotiation or request a third party to determine the license conditions.If there is no legitimate reason,the other party needs to actively accept and cooperate with the third party’s intervention.Among them,the first,third,and second and fourth steps can be merged,and the first and second steps can also be omitted according to the trading habits of both parties.Patentee and implementer need to fully negotiate based on the above negotiation framework.If negotiation fails,a lawsuit can be filed with the court.The offer made by the patentee in step 5 is deemed to have provided consideration in accordance with the FRAND terms.(3)The standard for issuing bans.If the patentee fully fulfills the obligations of the FRAND license negotiation framework mentioned above,but the implementer fails to fulfill the obligations of the FRAND license negotiation framework mentioned above,the court may support the claim of the patentee requesting a court order to stop the infringement.(4)Consideration factors for determining license consideration.When determining the licensing consideration for standard essential patents,it is necessary to consider the factors that both licensing parties need to consider in a free licensing negotiation environment: 1.whether the standard formulation of the standard essential patent in question is the core version;2.The selling price of standard essential patent licensed products;3.The predicted scale of the market involved in the licensed product;4.Whether the standard essential patent involved in the case has passed the invalidation lawsuit;5.Estimated sales volume of licensed products;6.The validity period of standard essential patents;7.Is the implementer willing to conduct market promotion for the licensing of necessary patents for the involved standards;8.Technical progressiveness of standard necessary patents;9.How long is the implementer willing to authorize the agreement;10.Is the implementer willing to pay the license fee in a lump sum or in installments. |
PDF Full Text Request