In its recent decision ATF 140 III 134, the Swiss Federal Supreme Court held that certain claims raised by patent licensors against their exlicensee after the termination of their patent license agreement were within the jurisdiction of the arbitral tribunal notwithstanding a contractual provision which seemed to limit the submission to arbitration of only pretermination disputes. This interesting decision confirms that courts can consider adequate to confer to arbitral tribunals the jurisdictional powers to decide on patent-related claims after the termination of the patent license agreement at issue, even in the presence of contractual limits to the jurisdiction of the arbitral tribunal. This note further discusses the opposite scenario in which certain disputes arising before the conclusion of a patent license agreement can be submitted to arbitration. This peculiar situation arises in connection with so called standard essential patents (which are quite common in the information technology / telecommunication industries) which must be made available to willing licensees under fair, reasonable and non-discriminatory terms and conditions (FRAND) and for which arbitration can be used in order to determine the FRAND-compliant terms and conditions of the patent license agreement (specifically the royalties to be paid by the licensee for the use of the standard essential patents). This note analyses this scenario in the light of the recent commitments made by Samsung (in its high profile dispute with Apple) which were validated by the European Commission on April 29, 2014 and which contains very interesting arbitration-related features which deserve to be presented. In sum, this note illustrates the expanding significance of arbitration for patent licensing disputes with respect to both post-termination disputes (as decided in ATF 140 III 134) and pre-licensing disputes (as contemplated for FRAND disputes).
Cette chronique couvre la période 2013 / début 2014. Elle porte sur les deux offres concurrentes qui ont visé la société Victoria-Jungfrau Collection AG, la notion et le changement de contrôle au sein des groupes d’actionnaires, la prise en compte des autres prestations importantes dans le calcul du prix minimum, les rapports entre une restructuration soumise à un droit étranger et le droit suisse des OPA et l’effet de la nouvelle réglementation des abus de marché sur les programmes de rachat.
The growing importance of intellectual property assets in today’s economy and transnational business transactions, the complexities and disadvantages of intellectual property litigation before state courts as well as the attractiveness of ADR solutions as such (particularly in terms of confidentiality of expertise) explain why arbitration and other alternative dispute resolution systems (particularly mediation) are increasingly perceived as attractive methods for solving intellectual property disputes at the global level. This trend is also perceivable in Europe as a result of the new patent court system that shall be established on the basis of the recent adoption of the European Patent with Unitary Effect and of the Agreement on a Unified Patent Court signed in February 2013 which will include the creation of a new patent mediation and arbitration center (which will have its seat in Lisbon and in Ljubljana). These developments make it necessary to analyze what are the traps and promises of the new patent arbitration and mediation landscape that will be available in Europe on the basis of this new regulatory environment.
