Technology Transfers in Europe

Transcription

1 Technology Transfers in Europe The (revised) Balance between IP and Competition Law

2 AGENDA (1) The technology based industry challenges and solutions (2) Patents key to Technology Transfer (3) Technology Transfer (revised) EU Competition Law Regime 2

3 (1) The technology based industry - challenges and solutions Dynamic markets Increasing competitive pressure CHALLENGES Globalisation Speed of technological progress 3

4 (1) The technology based industry - challenges and solutions R&D cooperation Pool know-how Share risks SOLUTIONS Production cooperation - specialisation - outsourcing - subcontracting Share costs Cross Launch innova- fertilisation faster tion of ideas & experiments Technology transfers 4

5 (1) The technology based industry - challenges and solutions Technology transfer / intellectual property licensing R&D Results / technology IPRs - patents - utility models - designs - software Technology licensing Production of contract products 5

6 (2) Patents - key to Technology Transfer A patent an exclusive, in time limited, territorial right granted by the State (national or regional patent office) for an invention that is new that involves inventive step that is capable of industrial application made public / disclosed in an official journal 6

7 (2) Patents - key to Technology Transfer Invention? new and inventive solution a (improved) product / device a (improved) process to a technical problem in all fields of technology (EPC 2000) involves human ingenuity / inventiveness discovery 7

8 (2) Patents - key to Technology Transfer Rights granted? the right to exclude others from commercially using the invention, including: the making of the patented product / process the offering for sale, the selling, the importing, the internal use, the storing freedom to use by the owner regulatory clearance to market managing innovation implies / requires a good knowledge of the patent system 8

9 A. Technology Transfer - General Permission granted by the owner of the intellectual property right to another to use it On agreed terms and conditions: Defined purpose Defined territory Agreed period of time Licensing out / Licensing in 9

10 A. Technology Transfer - General Opportunities : substantial economic benefits Share risks Save costs Pool know-how Launch innovation faster Threats : anti-competitive effects Price fixing Output limitation Sharing of markets Sharing of customers Innovation (quality, variety) limitation 10

11 B. Article 101 TFEU Article 101(1) TFEU (prohibition) Prohibits agreements that appreciably prevent, restrict or distort competition within the EEA a contracting party s possibility to exploit its own technology e.g. an agreement limiting and/or to effectuate independent R&D void not enforceable agreement (art. 101(2) TFEU) fines up to 10 % worldwide turnover 11

12 B. Article 101 TFEU Article 101(3) TFEU (exemption) Exempted provided 4 cumulative conditions are met: improving production/distribution or promoting technical or economic progress fair share for consumers indispensable to attain the objectives no possibility to eliminate competition in respect of a substantial part of the products in question technical or economic benefits > limitations on competition 12

13 B. Article 101 TFEU Art. 101(3) TFEU (exemption) Presumption for agreements exempted by categories Other : ad hoc assessment of art. 101(3) TFEU Self assessment Helping means : De minimis notice (2001) no competition distortion if market share does not exceed : 10% (joint / competitors) 15% (each / non-competitors) Guidelines on the effect on inter-state trade (2004) Safe Harbours (Reg. 774/2004 TTBER, expired on 30 April 2014 / Reg. 316/2014 entered into force on May 1 st 2014) TTBER Guidelines (2014) 13

14 B. Article 101 TFEU - Assessment Summary Presumption: not caught by 101(1) TFEU 101(1) TFEU - TTBER exemption 101(1) TFEU not covered by TTBER 101(3) TFEU Safe harbour nr. 1 Safe harbour nr. 2 Individual assessment Safe harbour nr. 1 : - 4 or more technology substitutes or; below de minimis or no noticeable influence on interstate trade - no hardcore restriction Safe harbour nr. 2 : - under TTBER market share threshold, and - no hardcore restriction Individual assessment : - the market position of the parties, competitors and purchasers (market power) - market access thresholds - maturity of the market - other factors (e.g. length of the agreement, regulatory frame, etc.) 14

15 B. Article 101 TFEU TTBER Exemption (Safe Harbour N 2) 101(1) TFEU TTBER exemption the six steps assessment TTA? Relevant market? Competitors? Hardcore restrictions? Marketshares? Excluded restrictions?

16 Step 1 : TTA? An agreement between two contracting parties ~ Three or more parties Technology Transfer agreements (exc. patent pools) concerning the use of technology patent(s) (application)(s) design(s) and model(s) topographies of semi-conductor products copyright on software (exc. reproduction for resale as is ) supplementary protection certificates breeder certificates know-how a combination 16

17 Step 1 : TTA? For the production of intermediate or end-goods/services ~ Technology Transfer agreements relating to copyright, other than software copyright License agreements relating to trademarks (exc. directly related to production / sale of the contract products irrespective of value of the TM license) License agreements relating to neighbouring rights (e.g. rental and public performance rights) 17

18 Step 2 : Relevant market? Step 3 : Competitors? The relevant markets : Identification of relevant products and technologies Assessment of substitutability COMPE- TITORS? Yes No Actual or potential competitors on the relevant product market Even if potential competitors on the relevant technology market 18

19 (3) Technology Transfer - (revised) EU Competition Law Regime Step 4 : Hardcore restrictions Restriction on active sale in the territory or to a customer group reserved to another licensee (not competing with licensor upon entering licence agreement) Restriction of possibility for licensees to exploit their own technology 19

20 Step 5 : Market shares? Definition of the relevant market: Identification of relevant products and technologies Appreciation of substitutability 2004 TTBER (Guidelines) yes COMPETITORS? no no The combined market share on a relevant market > 20 %? Does the licensee own a technology which it only uses in-house and which is substitutable for the licensed technology? no yes yes no Within safe harbour Outside safe harbour The individual market share of each of the parties on a relevant market amounts to > 20 %? The individual market share of each of the parties on a relevant market amounts to > 30 %? no yes no yes Within safe harbour Outside safe harbour Within safe harbour Outside safe harbour Draft TTBER (Guidelines) Final revised TTBER 2014 (Guidelines) 20

21 Step 5 : Market shares? Preferential calculation on the basis of turnover data Among non-competitors : TTBER applies between 15% and 30% individual market share Among competitors : TTBER applies between 10% and 20% joint market share Excession during the agreement? 2 years respite 21

22 Yes Competitors? No Step 6 : Excluded restrictions? Yes Obligation of exclusive licence / transfer of severable and nonseverable improvements / new applications No Obligation of exclusive licence / transfer of severable and nonseverable improvements / new applications No Yes Yes No-challenge clause (reciprocal) = termination clause if any of the IPR held by the other party in the EU is challenged Exc.: right to terminate exclusive license when validity of IPR is challenged No-challenge clause (reciprocal) = termination clause if any of the IPR held by the other party in the EU is challenged Yes No No Yes Right to terminate agreement when one party challenges the validity of any IPR held by the other party in the EU («defensive termination») Right to terminate agreement when one party challenges the validity of any IPR held by the other party in the EU («defensive termination») Yes No No Draft TTBER Restriction exploitation by licensing of own technology Yes Restriction exploitation by licensing of own technology Yes Final Revised TTBER No No Restriction independant R&D by any of the contracting parties Yes Restriction independant R&D by any of the contracting parties Yes TTBER not applicable to clause concerned Individual assessment of clause concerned TTBER applicable to whole agreement Agreement CANN0T be exempted (hardcore restrictions) TTBER applicable to whole agreement TTBER not applicable to clause concerned Individual assessment of clause concerned 22

23 B. Article 101 TFEU / TTBER Assessment - Example Year 1 : Geographic and product market Total value market = 100 million Xeran Yplan A patent X : 10 MIO B patent Y : 5 MIO C : does not sell competing products / does not own and license competing technology D Patent Z : 3 MIO 23

24 Year 2 : Geographic and product market Total value market = 100 million Xeran Yplan A patent X : 10 MIO License of X Territorial protection License of X Prohibition of active sale by B on Belgian market Royalty computation on entire turnover of B C patent X : 2,5 MIO D Patent Y : 1 MIO Patent Z : 3 MIO B patent X : 2.5 MIO patent Y : 5 MIO Market share technology market : A = 0 % B = 0 % C = 0 % D = 0 % Market share product market : A = 10 % B = 5 % 24 C = 0 % D = 3 %

25 Year 3 : Geographic and product market Total value market = 100 million A patent X : 12,5 MIO License of X Territorial protection License of X Prohibition of active sale by B on Belgian market Royalty calculated on entire turnover of B B patent X : 10 MIO patent Y : 0 MIO C patent X : 5 MIO D Patent Y : 1 MIO Patent Z : 3 MIO Market share technology market : A = 15% B = 6% C = 0% D = 0% Market share product market : A = 10% B = 7,5% C = 2,5% D = 4% A+B = exempt during Year 4 and Year 5, provided no hard core restrictions; thereafter individual assessment

26 Questions? 26

27 Contact details : Yves Van Couter : yves.van.couter@loyensloeff.com Loyens & Loeff Woluwe Atrium Neerveldstraat Sint-Lambrechts-Woluwe (Brussels) Belgium Tel. : Fax :