Oliver Schön: “The case law of the UPC and the German courts is the gold standard”

JUVE Patent: There were 332 new cases at the two patent litigation chambers at Munich Regional Court in 2025, a significant increase of 52% and thus bucking the trend at national patent courts. How do you explain this development?

Oliver Schön: The rising number of proceedings in Munich is undoubtedly related to the fact that the introduction of the Unified Patent Court has led many presiding judges from other jurisdictions to move either full time or part time to the UPC.

“In Munich we had staff continuity from early 2023 until the end of last year”

If it is unclear who will conduct the proceedings, it is a disadvantage for the plaintiffs’ representatives. In Munich, we had staff continuity from early 2023 until the end of last year. In addition, we conduct our proceedings relatively quickly. As a rule, it takes about a year from receipt of the complaint to the trial.

Nevertheless, Munich Regional Court has also seen changes due to the UPC. Georg Werner, previously the presiding judge of the 21st Civil Chamber, is now at the UPC. The court quickly appointed Hubertus Schacht as his successor. What impact will this have on how the two chambers interact?

I have known Mr Schacht for more than ten years. He was a member of the 7th Civil Chamber. In the short term, the two patent litigation chambers will coordinate whether Mr Schacht’s chamber answers key questions in the same way as our chamber.

Presumably this would include Munich FRAND case law as recently set out by the 7th Civil Chamber in the two decisions ASUS I and II. Do these principles only apply to your chamber?

It remains to be seen whether the parallel chamber will follow suit. Of course, we talk to each other a great deal.

Up to now, German courts have not examined the willingness of SEP holders to grant a licence. Your chamber is now changing this with the two judgments. Why?

The time when SEP proceedings in Germany were decided solely on the patent user’s lack of willingness to take a licence is over. On the one hand, the courts have more experience. On the other hand, there is a need on the part of patent users for a certain degree of transparency through corresponding decisions.

What new principles on FRAND have you written in ASUS I and II?

We haven’t changed that much. We have only clearly written down a few points, most of which are based on the reference decision from last July. In ASUS I, we deal in great detail with how the licence offer of a patent pool is to be assessed. The rates of the pools are published on the Internet and could therefore be used for a calculation.

“In the question of past compensation, we differ greatly from the UK courts”

On this basis, we carried out a trial calculation, which ultimately showed that the offer of the specific pool did not fully utilise the licensing potential. In fact, the case was more complicated because it was not the pool rate but a bilateral licence that was at issue. But we made a sample calculation using the available figures. Ultimately, however, it was an obiter dictum because the defendant had not provided sufficient security or made a down payment.

And ASUS II?
This was a special situation because we assumed that the defendant had fulfilled the requirements with regard to the partial payment in accordance with our reference decision. Here, it was actually relevant to the decision whether the plaintiff’s offer was FRAND or not. We examined a large number of comparative licence agreements and came to the conclusion that the plaintiff had implemented its licensing programme consistently and that it was not disproportionate.

Another important aspect of ASUS II is the assessment of comparative licences and the question of past compensation. It is precisely in the latter aspect that we differ greatly from the UK courts.

What is your conclusion on the issue of compensation for the past?

It is important because in almost every SEP procedure there is a dispute as to whether the rate stated in comparative licence agreements is lower, contrary to what it says, because the past has also been compensated. We assume that you can request money for the past, but you don’t have to.

You also commented on the security payment.

We have said that the patent user must actually pay a certain amount that he offers himself. Incidentally, the judges in the UK now also see it that way.

The question is what to do if the parties’ offers are extremely far apart. For example, one party demands a hundred and the other offers five. What is certain is that the five must actually be paid. However, it is unclear whether additional security must also be provided. We have established clear criteria for this question. The decisive factor is the difference as an absolute figure and as a percentage. If these criteria are met, we are of the opinion that the amount due for one year of the licence must be provided as additional security. This is our attempt to find a compromise. We could have set a longer period, for example two years — the period until the Higher Regional Court has ruled in the appeal instance. However, we think that one year will lead to more realistic figures.

But even with this proposal, you are still some way off the case law of the Higher Regional Court.

Yes, but the Federal Court of Justice recently ruled in VoiceAge vs HMD. We do not yet know the reasons for the decision, but it is relatively clear from the press release that the Federal Court of Justice does not require the defendant to deposit the full amount demanded by the plaintiff as security.

“If the Higher Regional Court’s case law had been applied, we would never have had to discuss FRAND”

On the other hand, if the Higher Regional Court’s case law had been applied, we would never have had to discuss FRAND because I have never seen any proceedings in which the security was deposited in the amount of the plaintiff’s offer. In this respect, our case law has actually always been more favourable to the defendant than that of the Higher Regional Court.

Munich is known for SEP proceedings, but last year you issued a far-reaching preliminary injunction with cross-border effect for the blockbuster drug Eylea. What has changed?

The perception that we are seeing more proceedings from the pharmaceutical sector is based on coincidence. In the past, life sciences cases tended to be heard by the 21st Civil Chamber, whereas the 7th Civil Chamber was heavily involved in SEP proceedings. This was due to the random nature of the filings. In the so-called Formycon proceedings last September, we had to decide on a cease and desist for several other European countries. I think that we were able to provide the parties with comprehensible reasons for this, so that further life sciences lawsuits were subsequently filed. The fact that we were the first German court to have to rule on a cross-border injunction following the CJEU decision in BSH Hausgeräte vs Electrolux undoubtedly played a part.

The court then issued another order against a generics manufacturer based on the same patent. What is the difference between the two decisions?

In the original decision from last September, the connecting factor for international jurisdiction was the place of jurisdiction of the domicile. In the second proceedings, it was a question of the place of jurisdiction of the material connection in accordance with Article 8 of the Brussels Ia Regulation. As these proceedings have been otherwise settled, members of the chamber will be publishing on this in the near future. As a result, we can see that the CJEU ruling has given us a very strong additional jurisdiction. Regardless of what we as national judges think of this, it is in line with the requirements of the CJEU and European legislation.

What will be the challenges in terms of long-arm jurisdiction in the future? Which are the most pressing?

We need to work out exactly where the boundaries lie. In the two Eylea decisions, my chamber assumed that there is a very strong presumption of infringement in the EPC member states. The extent to which such a presumption also applies to countries that are not EPC members will have to be worked out in future decisions.

My personal opinion is that there may need to be a distinction between legal systems that are based on continental European law, such as in several Asian countries. Here, it will probably be possible to work with a certain limited presumption of infringement. On the other hand, there are countries such as the United States, where it will be very difficult for a German court to judge whether there is an infringement. But the fundamental prerequisite for such far-reaching decisions is always that the defendant is domiciled in Germany or another European country. Otherwise, this is not relevant.

“Long-arm jurisdiction will play an important role in pharmaceutical proceedings especially”

There are indications that long-arm jurisdiction will play an important role in pharmaceutical proceedings especially, because there is a great need for patent holders to cover as many countries as possible. In the SEP area, long-arm plays practically no role because, from the perspective of SEP holders, an obligation to cease and desist with regard to the German market regularly has a sufficient signalling effect.

In the future — in Europe at least — it will be important to work out to what extent the assumption of an infringement in one country affects the presumption of infringement in other countries. Another important question is what the parties must present with regard to foreign law. In the Eylea proceedings, both parties made submissions on foreign law. Whether the approach of introducing foreign law into the proceedings via the parties is correct will certainly still be the subject of decisions by the Higher Regional Court and the Federal Court of Justice. However, I tend to think that the long-arm effect will focus on the area of the European Union.

How do you think the interplay between national patent courts and the UPC will develop?

There will still be a need for national, German patent jurisdiction because it is cheaper. This is important for smaller companies that are worried about risking high costs at the UPC. We also make faster decisions. Most UPC proceedings take longer due to the combination of infringement and nullity cases. The national patent courts will certainly complement the services created by the UPC.

“More people are being advised to apply for national patents”

Around 80% of our proceedings are based on European patents. Whether the transitional phase is extended will be key. If not, the UPC will have to create additional capacities to deal with the proceedings that are currently pending before the national courts. I think that the reduction in proceedings at the national courts will not be so great in the long term, because there are relatively many SME and SEP proceedings. I hear from lawyers that more and more people are being advised to apply for at least additional national patents.

Munich Regional Court has been increasingly issuing judgements on the same day as the oral hearing. What have you changed in the conduct of proceedings?

In the 7th Civil Chamber, the proceedings are scheduled immediately upon service of the lawsuit, as it is important for the plaintiff to quickly receive a specific date for the hearing. When the statement of defence is received, we set the deadlines for the other pleadings. As a result, the proceedings as a whole are streamlined and there are only a few interim rulings.

As a rule, we prepare so that we go into the hearing with a written opinion. We focus on the disputed points and unresolved issues. This approach has the advantage that we can write down the facts of the case in concrete terms and better understand the issues involved. If you only prepare by discussing the case, there is always a risk that the underlying issues will not be fully understood.

Couldn’t lawyers argue that it is difficult to change the judges’ minds in the oral hearing if they have a preconceived opinion?

No, we may have more work to do in advance, but we go into the hearing better prepared. There we check whether what we have written down corresponds to what the parties are saying. We give a relatively long introduction to the facts of the case and then normally finalise the judgment within a few days. In order to better manage capacity, we have started to regularly announce the judgment at the end of the hearing day.

“We go into the hearing prepared, but we are always open about the outcome”

We are always open about the outcome. Particularly with regard to technology, we often need to have the full meaning of the invention explained to us. Furthermore, it can harm the plaintiff’s representatives in a nullity case if they interpret the patent broadly in the infringement case. As a result, they often write little or nothing on these points. The question of validity is often more difficult for us to grasp because we don’t have any technicians to ask. If we receive convincing arguments, we are happy to take them on board.

Last year many SEP cases settled before a judgment could be announced. To JUVE Patent’ knowledge, there are no SEP cases in which Munich Regional Court has dismissed the claim. Why is that?

Indeed, there are no such decisions. This is because, after the introduction of the facts of the dispute, the plaintiff has the opportunity to prevent a judgment against it, for example by obtaining a stay. If we were of the opinion that a patent has been infringed and is legally valid, but the offer made by the plaintiff is not FRAND, then we would not reject it, but suspend it.

National courts are haemorrhaging judges to the UPC. Where will future patent judges come from?

Many experienced judges have moved to the UPC. This has massively altered the national European patent court landscape. In places where not all presiding judges have moved, this also creates opportunities. You can see this in the development of our case numbers.

“I am confident we can continue to build on good lawyers who see reliable prospects”

In the past, promotion opportunities for young judges in the field of patent law were sometimes difficult because the presiding judges at the Regional Court and Higher Regional Court remained in their posts for a very long time. As a result, there was a considerable pool of experienced judges to fill vacancies. Today, there is more fluctuation and that will stay the case because the UPC will continue to be attractive.

The decisive factor will be where the young judges come from. They will probably continue to come from the judiciary. We always see good lawyers in Munich who have a connection or experience in patent law who want to switch to the judiciary. I am confident that we can continue to build on good lawyers who see reliable prospects, because once you have been trained, you don’t have to change specialisms to be promoted, as is the case in other areas.

There have been clashes between the UK, Germany and the UPC concerning SEP and FRAND in recent months. Why is this?

Much ado about nothing. First of all, I think the courts in the UK and their judges are highly competent. However, they cannot move to the UPC because of Brexit. And the structure of the national courts there is not so attractive for plaintiffs because the proceedings are relatively expensive and take a long time. In my view, the UK judges are ultimately trying to reach the gold standard with their case law, and the gold standard is the case law of the UPC and the German courts. The UK judges position themselves a little differently to us so as to be attractive. This affects the Munich Regional Court more than other courts because we have the most cases. But we have to accept that.

“UK judges are ultimately trying to reach the gold standard with their case law”

I also believe that a rate-setting procedure in the UK is not advantageous for the plaintiffs there. There is some evidence to suggest that initiating such proceedings can lead to higher rates. Specifically, we stated in the ASUS II decision that the party seeking a licence determination procedure there must provide the amount specified there as security.

How do you view the dispute over anti-interim licence injunctions, as decided by the 21st Civil Chamber in late summer?

Fortunately, our chamber has not yet had to decide this issue. We had another case involving an anti-ETSI injunction. But that was a special case. The UK courts always emphasise that their interim licence decisions are not binding abroad. That’s why we accept that. The problem only arises when a party tries to use such a decision in a dishonest way. I think it is probably a good de-escalating measure to simply accept such injunctions as a local plaintiff, introduce them into the German proceedings and make submissions on them.

Experts agree that the global SEP system is not ideal. But does there need to be a different solution, and what could it look like?

The system is not perfect, but it works. One major problem is the lack of transparency with regard to comparative licences. On the patent user side, this often leads to the feeling that the competitor may have paid less. Patent users therefore want to see contracts concluded with competitors, but this usually either does not happen or only at a late stage. This leads to much speculation. Many expert reports work with decisions from the UK, for example, because most figures are still disclosed there. However, some of these decisions are relatively old and the figures may not be representative, or they may themselves be based on another decision.

“A major problem is the lack of transparency regarding comparative licences”

We try to approach this problem via the pool rates and say what an appropriate licence might be. Because here the figures are public. Even if we analyse submitted licence agreements in their entirety without giving a figure, we get a bit more transparency, which could help.

If transparency of comparative licences is the central issue, are we really only talking about a problem with standards that are newly licensed?

Yes, we have a situation with mobile radio standards where there has been a relatively established licensing practice for over ten years. My impression is that some of the larger market players are already in their second or third licensing round. We see few disputes here. The proceedings that have been filed recently mainly concern wifi and streaming. The remuneration of video encoding for streaming is very topical. There is still a lack of experience as to how a reasonable agreement can be reached. Every patent user may be worried that they will be the first to sign a contract and that others will get more favourable conditions in the future. Mandatory arbitration or an authority that makes a FRAND-like determination are certainly not the solution to the existing problems.

The interview was conducted by Mathieu Klos and Konstanze Richter