Antisuit injunctions in SEP disputes and the recent EU's WTO/TRIPS case against China

• Published date: 01 November 2023
• Author: Enrico Bonadio,Nicola Lucchi
• Date: 01 November 2023
• DOI: http://doi.org/10.1111/jwip.12275

Received: 13 March 2023

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Accepted: 19 March 2023

DOI: 10.1111/jwip.12275

NOTE

Antisuit injunctions in SEP disputes and the

recent EU's WTO/TRIPS case against China

Enrico Bonadio

1

|Nicola Lucchi

2

1

The City Law School, City University of

London, London, UK

2

Department of Law, Pompeu Fabra

University, Barcelona, Spain

Correspondence

Nicola Lucchi, Department of Law, Pompeu

Fabra University, Barcelona, Spain.

Email: nicola.lucchi@upf.edu

Enrico Bonadio, City University of London,

London, UK.

Email: enrico.bonadio.1@city.ac.uk

Abstract

The existence of standard essential patents (SEPs)—and the

associated litigation—has potentially disruptive conse-

quences for the manufacture, marketing and distribution

of complex products that incorporate many patented

standards, for example, information and communication

technology (ICT) products such as smartphones that

incorporate a camera, video, web browser, wireless

communications, text messaging, and so on, as well as an

increasing number of ‘connected’Internet of Things

products such as wearable devices and ‘smart home’

devices. Indeed, SEP owners may use the patent enforce-

ment system to prevent implementers of these technolo-

gies from bringing to market competing products that use

the same standards. As is known, this raises concerns about

competition in the market and the need to maintain

interoperability to ensure the development of the ICT

industry. One of the legal tools which can be used by

implementers to (try to) neutralise SEP holders' antic-

ompetitive behaviours is the ‘antisuit injunction’(ASI). ASIs

are not uncommon in common law jurisdictions while they

are foreign to civil law countries within the European Union

(EU). ASIs are particularly useful to SEP implementers when

patent holders disrespect their commitment to license their

patents on a FRAND basis. For example, a judge who is in

J World Intellect Prop. 2023;26:477–489. wileyonlinelibrary.com/journal/jwip

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© 2023 The Authors. The Journal of World Intellectual Property published by John Wiley & Sons Ltd.