Justice Colin Birss: on Brexit, Unwired Planet and FRAND in life sciences

During the session held on September 24, and moderated by World Intellectual Property Review editor-in-chief Peter Scott, he also shared his passion for promoting D&I in the legal sector, his frustration with unprepared barristers and the future of IP in the UK, post-Brexit.

The session broached his groundbreaking judgment in Unwired Planet (April 2017), in which Birss held that the undertaking given by standard-essential patent (SEP) owners to standard-setting organisations to grant SEP licences on fair, reasonable and non-discriminatory (FRAND) terms was enforceable in the English courts.

Notably, he concluded that in the circumstances of an international patent portfolio and a licensee with global sales, a FRAND licence would be global.

Birss further held that if Huawei did not agree to accept a global licence on those terms, it would be subject to an injunction in the UK. The UK Court of Appeal upheld his decision in 2017, followed by the UK Supreme Court last month.

Speaking about the long-term and international implications of the ruling, he said:

“I would imagine other courts will do the same and I think that’s a good thing. I don’t think there is anything special about the UK courts….in principle, it is like a commercial contract. The same applies to FRAND.”

The FRAND structure, he added, could potentially be used for some form of collaboration between companies within the life sciences. “Fundamentally, what FRAND is designed for is to facilitate collaboration between the different technology companies. It just happens to be in the frame of the mobile telephony… there must be problems in the life sciences system that require collaboration.”