INTELLECTUAL PROPERTY & INTELLECTUAL PROPERTY & TRANSFER OF TECHNOLOGYTRANSFER OF TECHNOLOGY What is technology ? Importance for economic growth and What is technology ? Importance for economic growth and

development development

Types of protection of technology:Types of protection of technology:1. Patents (statutory protection) - s. infra 1. Patents (statutory protection) - s. infra 2. Know How (protection by agreements and general 2. Know How (protection by agreements and general private law) - s. infra private law) - s. infra

3. Sometimes copyright - s. infra -, e.g. for software3. Sometimes copyright - s. infra -, e.g. for software 4. Sometimes law on trademarks and designs also protects 4. Sometimes law on trademarks and designs also protects

technology – s. ch. Distributiontechnology – s. ch. Distribution5. Plant variety rights5. Plant variety rights

CONFLICT OF LAWSCONFLICT OF LAWS

Conflict of law rules for IP rights:Conflict of law rules for IP rights:- The IP right is in principle territorial, limited to the country The IP right is in principle territorial, limited to the country

of registration of registration (or set of countries: Benelux IP rights (trademarks, designs (or set of countries: Benelux IP rights (trademarks, designs etc.), EU trademark, etc.). etc.), EU trademark, etc.). But territoriality may affect e.g. goods in transit (s. infra).But territoriality may affect e.g. goods in transit (s. infra).

- Conflict rule: Conflict rule: lex loci protectionis lex loci protectionis (eg Berne Convention 5.2; (eg Berne Convention 5.2; art. 8 Rome-II regulation) > fragmented application in case art. 8 Rome-II regulation) > fragmented application in case of effect in more than 1 countryof effect in more than 1 country

- Internal rights and duties arising out of license contracts: Internal rights and duties arising out of license contracts: choice of law, subs. law of the country or the licensor choice of law, subs. law of the country or the licensor (Rome-I-Regulation)(Rome-I-Regulation)

TRIPS: PRINCIPLESTRIPS: PRINCIPLES TRIPs Agreement = Trade Related Aspects of Intellectual TRIPs Agreement = Trade Related Aspects of Intellectual

Property Rights 1994Property Rights 1994 Balancing protection of IP rights v. access to technology Balancing protection of IP rights v. access to technology

(comp. infra)(comp. infra) The TRIPS Agreement determines:The TRIPS Agreement determines:- The minimum standards of protection for 6 categories The minimum standards of protection for 6 categories

intellectual property rights; no general exceptions but intellectual property rights; no general exceptions but specified rules for each category. Missing (not harmonised): specified rules for each category. Missing (not harmonised): rules on exhaustion of a right (s. infra)rules on exhaustion of a right (s. infra)

- Possible exclusions in art. 8 (health, nutrition, …)Possible exclusions in art. 8 (health, nutrition, …)- The basic principles of equal treatment: MFN principle (art. The basic principles of equal treatment: MFN principle (art.

4) and national treatment4) and national treatment- Transparency obligation related to the relevant national lawTransparency obligation related to the relevant national law- Mandatory remedies for the enforcement of IP rights Mandatory remedies for the enforcement of IP rights - - Applicability of the Dispute Settlement Procedure of the Applicability of the Dispute Settlement Procedure of the

WTO (DSU)WTO (DSU)

TRIPS: INSTITUTIONALTRIPS: INSTITUTIONAL

General obligations of member states in TRIPS : General obligations of member states in TRIPS : - Adequate enforcement procedures in the Adequate enforcement procedures in the

domestic legal system domestic legal system - Criminal sanctions for serious infringements Criminal sanctions for serious infringements

(wilful counterfeiting, commercial scale piracy) (wilful counterfeiting, commercial scale piracy) - see infra slides on compliance in EUsee infra slides on compliance in EU Institutional: TRIPS CouncilInstitutional: TRIPS Council

In the EU: since the Lisbon Treaty, TRIPS is an In the EU: since the Lisbon Treaty, TRIPS is an exclusive competence of the EU (art. 207 TFEU, exclusive competence of the EU (art. 207 TFEU, ECJ in C-414/11)ECJ in C-414/11)

TRIPS: IP RIGHTS (1) TRIPS: IP RIGHTS (1) CopyrightCopyright

Copyright and « neighbouring rights » Copyright and « neighbouring rights » < Berne Convention (1886 as amended 1971): lifetime of < Berne Convention (1886 as amended 1971): lifetime of the author plus 50 years (NB in EU 70 years). Further partial the author plus 50 years (NB in EU 70 years). Further partial harmonisation in the EU (Dir. 2001/29)harmonisation in the EU (Dir. 2001/29)

- neighbouring rights of performers, producers etc.neighbouring rights of performers, producers etc.- copyright is acquired automatically (no registration copyright is acquired automatically (no registration

necessary; registration exists in some laws (e.g. USA) and necessary; registration exists in some laws (e.g. USA) and gives additional benefits (esp. evidential value) gives additional benefits (esp. evidential value)

- Important question for trade: exhaustion ? In US law the Important question for trade: exhaustion ? In US law the copyright first sale doctrine applies worldwide (USC Ch. 17 § copyright first sale doctrine applies worldwide (USC Ch. 17 § 106 as interpreted by SCotUS decision of 19 III 2013, 106 as interpreted by SCotUS decision of 19 III 2013, KirtsaengKirtsaeng))

TRIPS: IP RIGHTS (2) PatentsTRIPS: IP RIGHTS (2) Patents Patents for inventions:Patents for inventions:

- Minimum availability (art. 27 TRIPS): a patent must be available Minimum availability (art. 27 TRIPS): a patent must be available for any invention (new, innovative and capable of industrial for any invention (new, innovative and capable of industrial application); list of authorised exclusions from patentability (i.a. application); list of authorised exclusions from patentability (i.a. possibility to exclude patents for medical treatments, etc.)possibility to exclude patents for medical treatments, etc.)

- Disputes on novelty in case of new versions of existing Disputes on novelty in case of new versions of existing medicines: medicines: GlivecGlivec-case Indian Supreme Court 2013 (S. -case Indian Supreme Court 2013 (S. 3(d) 3(d) 2005 Indian Patent Act prohibits the patenting of new forms of 2005 Indian Patent Act prohibits the patenting of new forms of existing pharmaceutical substances that do not demonstrate existing pharmaceutical substances that do not demonstrate significantly enhanced efficacy)significantly enhanced efficacy)

- Transitory provisions in art. 27 and 70 TRIPS.Transitory provisions in art. 27 and 70 TRIPS.- Minimal (content of the) protection is also defined (art. 28 ff. Minimal (content of the) protection is also defined (art. 28 ff.

TRIPS)TRIPS)- Art. 31 on compulsory licensing (see infra Paris Convention + Art. 31 on compulsory licensing (see infra Paris Convention +

rules for developing countries) (NB. Also a partial solution rules for developing countries) (NB. Also a partial solution against ‘patent trolls’)against ‘patent trolls’)

TRIPS: IP RIGHTS (3) OtherTRIPS: IP RIGHTS (3) Other

Trade marks, design rights: see chapter distributionTrade marks, design rights: see chapter distribution

Geographical indications & appellations of origin: see Geographical indications & appellations of origin: see chapter distributionchapter distribution

Topographies of integrated circuits (chips) Topographies of integrated circuits (chips) < WIPO Washington Treaty on IC 1989< WIPO Washington Treaty on IC 1989- duration of protection now minimum 10 years - duration of protection now minimum 10 years

Protection of « Trade secrets » (undisclosed information) or Protection of « Trade secrets » (undisclosed information) or « know how » < Paris Convention 1967« know how » < Paris Convention 1967

- > have to be protected if certain requirements are met > have to be protected if certain requirements are met (secret, commercial value because of its secrecy, (secret, commercial value because of its secrecy, reasonable steps to keep it secret) reasonable steps to keep it secret)

TRIPS: IP RIGHTS (4) PVR + TRIPS: IP RIGHTS (4) PVR + National PVRNational PVR

TRIPS - Plant varieties: TRIPS - Plant varieties: states may protect them either with patents or a specific right states may protect them either with patents or a specific right

(Plant variety right or Breeders right) or a combination of (Plant variety right or Breeders right) or a combination of both (27, 3 TRIPS) – eg by ratifying the UPOV treaty both (27, 3 TRIPS) – eg by ratifying the UPOV treaty (1961/1991). (1961/1991).

National plant variety rights:National plant variety rights:- In the EU it is either a plant variety (specific right) or a In the EU it is either a plant variety (specific right) or a

biotechnological invention (protected according to the biotechnological invention (protected according to the Biotechnology Directive 98/44). Biotechnology Directive 98/44).

- There is a ’unitary’ plant variety right since 1994 (Reg. There is a ’unitary’ plant variety right since 1994 (Reg. 2100/94) next to the PV rights of the member states. Aen 2100/94) next to the PV rights of the member states. Aen exception is made for the ‘farmers privileg’ or ‘crop exception is made for the ‘farmers privileg’ or ‘crop exemption’.exemption’.

NATIONAL PATENTSNATIONAL PATENTS Patents for inventions (in the US ‘utility patient’ as there Patents for inventions (in the US ‘utility patient’ as there

are also design patents)are also design patents) National patents: National patents: National law determines conditions and legal effects of a National law determines conditions and legal effects of a

patent:patent:- Conditions: generally novelty, inventiveness and industrial Conditions: generally novelty, inventiveness and industrial

applicability applicability - Exceptions to patentability (eg stemcells that can grow into Exceptions to patentability (eg stemcells that can grow into

embryos, ECJ 18 Oct 2011 in C-34/10 +ECJ 18 Dec 2014 in embryos, ECJ 18 Oct 2011 in C-34/10 +ECJ 18 Dec 2014 in C-364/13; human genes, SCotUS 13 June 2013)C-364/13; human genes, SCotUS 13 June 2013)

- Application procedure, costsApplication procedure, costs- Publication is necessary in exchange for protection Publication is necessary in exchange for protection -

NATIONAL PATENTSNATIONAL PATENTS Patents for inventionsPatents for inventions National patents - effectsNational patents - effects

- Protection is territorial (restricted to the country granting Protection is territorial (restricted to the country granting the patent) the patent)

- Parallel patents in various countries lead an autonomous Parallel patents in various countries lead an autonomous life life

- Limited in time (generally 20 years) (+ possible additional Limited in time (generally 20 years) (+ possible additional protection certificate (pharmaceutical products)protection certificate (pharmaceutical products)

- Scope of protection (exclusive rights)Scope of protection (exclusive rights)- In the EU: exhaustion principleIn the EU: exhaustion principle- Several exceptions/restrictions (eg farmers privilege of Several exceptions/restrictions (eg farmers privilege of

biotechnology)biotechnology)

PATENTSPATENTS International rules on recognition, harmonisation ? International rules on recognition, harmonisation ?

The minimum protection to be granted to foreign inventions The minimum protection to be granted to foreign inventions according to the TRIPS Agreement by reference to the Paris according to the TRIPS Agreement by reference to the Paris Convention 1883/1967 (supra)Convention 1883/1967 (supra)

Paris Convention on Industrial Properties 1883 (as amended Paris Convention on Industrial Properties 1883 (as amended Stockholm 1967):Stockholm 1967):

- National treatment (in the granting no discrimination based National treatment (in the granting no discrimination based on nationality) on nationality)

- Right of priority: after initial application in one country a Right of priority: after initial application in one country a period of grace of 12 months to apply in all other countries period of grace of 12 months to apply in all other countries with right of priority and retro-active effect with right of priority and retro-active effect

- Right of the government to grant compulsory licenses in Right of the government to grant compulsory licenses in case of absence of exploitation without justification for case of absence of exploitation without justification for more than 3 or 4 y.more than 3 or 4 y.

PATENT APPLICATIONSPATENT APPLICATIONS Under the Paris Convention still necessary to apply for Under the Paris Convention still necessary to apply for

patents separately in each country patents separately in each country Patent Cooperation Treaty 1970: simplify the application Patent Cooperation Treaty 1970: simplify the application

process; possibility of a centralised application for many process; possibility of a centralised application for many countries; patents are granted separately for each country. countries; patents are granted separately for each country.

A further Treaty is the PLT (WIPO), harmonising national A further Treaty is the PLT (WIPO), harmonising national application proceduresapplication procedures

European Patent Convention (EPC), München 1973, revised European Patent Convention (EPC), München 1973, revised 2000 in force 2007; 37 states (27 EU + 10 other): 2000 in force 2007; 37 states (27 EU + 10 other): - a single application (in En, Fr or German)* and - a single application (in En, Fr or German)* and - a single examination (European Patent Office Munich); - a single examination (European Patent Office Munich); - the granted patents remain however national patents and - the granted patents remain however national patents and will only be valid where the patent is validated (national will only be valid where the patent is validated (national requirements). Only 14 EU + 7 other have abolished or requirements). Only 14 EU + 7 other have abolished or reduced requirementes for further translation (« London reduced requirementes for further translation (« London agreement 2008 on art. 65 EPC »).agreement 2008 on art. 65 EPC »).

* in 2009 52% of applications were in English* in 2009 52% of applications were in English

EU PATENTEU PATENT EU Unitary Patent EU Unitary Patent Purpose: stop segmentation in national markets (autonomy of Purpose: stop segmentation in national markets (autonomy of

parallel patents restricts free movement of goods).parallel patents restricts free movement of goods). MS except Spain & Italy (refusing because of the language MS except Spain & Italy (refusing because of the language

arrangement) (and Croatia) started enhanced cooperation > arrangement) (and Croatia) started enhanced cooperation > agreement on 3 instruments December 2012; Italy may change its agreement on 3 instruments December 2012; Italy may change its in mind (2015)in mind (2015)

New UP will not be available for non-MS (as Norway, Switzerland and New UP will not be available for non-MS (as Norway, Switzerland and Turkey)Turkey)

1. Regulation 1257/2012: content of the unitary patent1. Regulation 1257/2012: content of the unitary patentProperty regime ? As a whole treated as a single national patent of the Property regime ? As a whole treated as a single national patent of the

coubtry of the applicantcoubtry of the applicant 2. Translation arrangements: Regulation 1260/2012:2. Translation arrangements: Regulation 1260/2012:- Application allowed in any official languageApplication allowed in any official language- Patent granted in English, French, German with unofficial machine Patent granted in English, French, German with unofficial machine

translations in the other languagestranslations in the other languages- Translation costs not to be paid by applicant.Translation costs not to be paid by applicant. 3. Dispute settlement (next slide)3. Dispute settlement (next slide)

EU PATENTEU PATENT EU Unitary Patent - dispute settlementEU Unitary Patent - dispute settlement Unified Patent Court Agreement (UPCA)(incl. Denmark & Italy Unified Patent Court Agreement (UPCA)(incl. Denmark & Italy

but without Spain & Poland) (needs ratification by F, D and UK + but without Spain & Poland) (needs ratification by F, D and UK + 10 other MS to enter into force (now F + 7 others), probably not 10 other MS to enter into force (now F + 7 others), probably not before mid-2016)before mid-2016)

= A common dispute settlement mechanism instead of parallel = A common dispute settlement mechanism instead of parallel dispute procedures dispute procedures ””for current European and future EU patentsfor current European and future EU patents”” > thus for unitary patents and (unless opted out) for EPC-patents> thus for unitary patents and (unless opted out) for EPC-patents

the EEUPC (European and EU Patent Court) consisting of:the EEUPC (European and EU Patent Court) consisting of:- a Court of 1st instance, with central chambers (Paris, London and a Court of 1st instance, with central chambers (Paris, London and

Münich) and local or regional chambers, and Münich) and local or regional chambers, and - a Court of appeal (Luxemburg)a Court of appeal (Luxemburg) Brussels-I-Reg has been amended to make it possible (Reg. Brussels-I-Reg has been amended to make it possible (Reg.

542/2014)542/2014) Will it be succesfull ? May depend on the duration of examination Will it be succesfull ? May depend on the duration of examination

by the EPO. Some national Patent Offices grant patents without by the EPO. Some national Patent Offices grant patents without lengthy examination …lengthy examination …

KNOW HOW / TRADE KNOW HOW / TRADE SECRETSSECRETS

Know how: a definition is found in Reg. 330/2010 art. 1 g.: Know how: a definition is found in Reg. 330/2010 art. 1 g.: ««a package of non-patented practical information, resulting a package of non-patented practical information, resulting

from experience and testing by the supplier, which is from experience and testing by the supplier, which is secret, substantial and identifiedsecret, substantial and identified»»

Definition in the American (Uniform Trade Secrets Act, Definition in the American (Uniform Trade Secrets Act, UTSA):UTSA):

““information, including a formula, pattern, compilation, information, including a formula, pattern, compilation, program, device, method, technique, or process, that: program, device, method, technique, or process, that:

(i)(i) derives independent economic value, actual or potential, derives independent economic value, actual or potential, from not being generally known to, and not being readily from not being generally known to, and not being readily ascertainable by proper means by, other persons who can ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, andobtain economic value from its disclosure or use, and

(ii)(ii) is the subject of efforts that are reasonable under the is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. circumstances to maintain its secrecy.

KNOW HOW / TRADE KNOW HOW / TRADE SECRETSSECRETS

See also minimum protection of trade secrets imposed by the See also minimum protection of trade secrets imposed by the TRIPS Agreement, by reference to the Paris Convention of TRIPS Agreement, by reference to the Paris Convention of 1883 /19671883 /1967

In the US: uniform state law (Uniform Trade Secrets Act, UTSA) In the US: uniform state law (Uniform Trade Secrets Act, UTSA) (adopted by 47 states), 2015 draft Defend Trade Secrets Act (adopted by 47 states), 2015 draft Defend Trade Secrets Act would introduce also the possibility of an ex parte (unilateral would introduce also the possibility of an ex parte (unilateral request) conservatory seizurerequest) conservatory seizure

In the EU: member state law; EU Commission made a Proposal In the EU: member state law; EU Commission made a Proposal on harmonised rules against misappropriation of trade secretson harmonised rules against misappropriation of trade secrets

- including maintaining confidentiality in case of litigationincluding maintaining confidentiality in case of litigation- and a ban on goods infringing trade secretsand a ban on goods infringing trade secrets- with wide exceptions, namely for the purpose of 1° fulfilling a with wide exceptions, namely for the purpose of 1° fulfilling a

non-contractual obligation or 2° protecting a legitimate non-contractual obligation or 2° protecting a legitimate interest.interest.

KNOW HOW / TRADE KNOW HOW / TRADE SECRETSSECRETS

Protection ?Protection ? Know how cannot be patented insofar as kept secret Know how cannot be patented insofar as kept secret Some protection by national laws. Requirements: technical Some protection by national laws. Requirements: technical

information which is 1° secret and 2° essential (for a information which is 1° secret and 2° essential (for a product, process or service). product, process or service).

In order to transfer know how (or grant a license) and at the In order to transfer know how (or grant a license) and at the same time keep the secret, it is necessary to identify same time keep the secret, it is necessary to identify properly the knowledge to enable verification of the 2 properly the knowledge to enable verification of the 2 abovementioned requirements (by description or abovementioned requirements (by description or otherwise)otherwise)

Protection not by an exclusive right , but by a Protection not by an exclusive right , but by a contractual contractual dutyduty of confidentiality, sometimes by unfair trade practices of confidentiality, sometimes by unfair trade practices lawlaw

TRANSFER OF TRANSFER OF TECHNOLOGY – generalTECHNOLOGY – general

Transfer in ownership / Licence of a limited right / Complex Transfer in ownership / Licence of a limited right / Complex contracts contracts

Transfer of a patent Transfer of a patent - a transfer of the property of a patent as an incorporeal asset, - a transfer of the property of a patent as an incorporeal asset, on the basis of a contract (depending on the counterperformance on the basis of a contract (depending on the counterperformance a sale, barter, investment in a legal person, donation, etc.) a sale, barter, investment in a legal person, donation, etc.) - as patents for different countries are autonomous, each patent - as patents for different countries are autonomous, each patent is to be transferred separately according to the law of property of is to be transferred separately according to the law of property of that country (that country (lex rei sitaelex rei sitae); a European Unitary Patent however is ); a European Unitary Patent however is a single patent to be transferred as a whole according to the law a single patent to be transferred as a whole according to the law of property of the country of the applicantof property of the country of the applicant- duty to guarantee of the transferor – extent of the duty - duty to guarantee of the transferor – extent of the duty depending on the content of the contract depending on the content of the contract - price usually a fixed sum (sometimes also royalties)- price usually a fixed sum (sometimes also royalties)

Transfer of know how ? Depends on how one classifies the right. Transfer of know how ? Depends on how one classifies the right.

TRANSFER OF TRANSFER OF TECHNOLOGY – LICENCETECHNOLOGY – LICENCE

Licence: granting a right to use the invention in the territory, Licence: granting a right to use the invention in the territory, whether or not exclusive whether or not exclusive

Patent licensing Patent licensing - mere licence in the sense of exemption from prohibition- mere licence in the sense of exemption from prohibition- normally in exchange for compensation in money (royalties) - normally in exchange for compensation in money (royalties) by the licenseeby the licensee- usually combined with other duties of the licensor (know how)- usually combined with other duties of the licensor (know how)- obligation to guarantee, incl. against third parties without right - obligation to guarantee, incl. against third parties without right (in case of bij exclusive licence); no guarantee of return on (in case of bij exclusive licence); no guarantee of return on investmentinvestment

« Licence » of know how ? Share information with the licensee « Licence » of know how ? Share information with the licensee in exchange for payment and with an obligation of secrecy (for in exchange for payment and with an obligation of secrecy (for the licensee) the licensee)

TRANSFER OF TRANSFER OF TECHNOLOGY – LICENCETECHNOLOGY – LICENCE

Compulsory Licences granted by the government: see supraCompulsory Licences granted by the government: see supra

Licenses for «standard-essential patents» (SEP’s), i.e. patents for Licenses for «standard-essential patents» (SEP’s), i.e. patents for inventions that must be used to meet the standard set by an SSO*: inventions that must be used to meet the standard set by an SSO*: > Licensing conditions must be « fair, reasonable and non-> Licensing conditions must be « fair, reasonable and non-discriminatory » (« FRAND »).discriminatory » (« FRAND »).

When a business is a ‘willing licensee ’, eg agreeing to acquire a When a business is a ‘willing licensee ’, eg agreeing to acquire a licence on FRAND terms to be determined by a third party, the patent licence on FRAND terms to be determined by a third party, the patent holder may no longer enforce the SEP as this would constitute abuse holder may no longer enforce the SEP as this would constitute abuse of dominant position (E.Commission 29 April 2014 in of dominant position (E.Commission 29 April 2014 in Motorola v. Motorola v. AppleApple). Further details about the conditions it woudl be an abuse by ). Further details about the conditions it woudl be an abuse by the patent holder elaborated by the ECJ in Huawei/ZTE (C-170/13, July the patent holder elaborated by the ECJ in Huawei/ZTE (C-170/13, July 2015).2015).

• SSO = Standard Setting Organisation, eg the ESTI (European SSO = Standard Setting Organisation, eg the ESTI (European Telecommunications Standard Institute »)Telecommunications Standard Institute »)

• Eg a mobile smartphone involves 250.000 patents ….Eg a mobile smartphone involves 250.000 patents ….

TRANSFER OF TRANSFER OF TECHNOLOGY – LICENCETECHNOLOGY – LICENCE

Content of Licence agreements (checklist) Content of Licence agreements (checklist)

Scope of application: territory; substance (rights granted, Scope of application: territory; substance (rights granted, e.g. including manufacturing) e.g. including manufacturing)

Exclusive or not Exclusive or not Transfer by licensee allowed or not Transfer by licensee allowed or not Technical information and/or technical assistance to be Technical information and/or technical assistance to be

given given Guarantees relating to the right Guarantees relating to the right Rights and obligations concerning improvements and Rights and obligations concerning improvements and

adaptations, eg grantback of improvements by the licensee adaptations, eg grantback of improvements by the licensee

TRANSFER OF TRANSFER OF TECHNOLOGY – LICENCETECHNOLOGY – LICENCE

Content of Licence agreements (checklist) Content of Licence agreements (checklist)

Obligations concerning quality of products manufactured Obligations concerning quality of products manufactured (reputation licensor), obligations concerning quantities (reputation licensor), obligations concerning quantities

Price (lump sum, royalties, guaranteed minimum in Price (lump sum, royalties, guaranteed minimum in royalties)royalties)

Duration of the contract; rights and duties in case of Duration of the contract; rights and duties in case of termination termination

Obligation of confidentiality (often precontractual NDA)Obligation of confidentiality (often precontractual NDA) No-challenge clause (or termination-on-challenge)No-challenge clause (or termination-on-challenge) Forum clause: choice of lawForum clause: choice of law

TRANSFER OF TRANSFER OF TECHNOLOGY – COMPLEXTECHNOLOGY – COMPLEX

Licence combined with a transfer of technology for Licence combined with a transfer of technology for marketing: see esp. franchisingmarketing: see esp. franchising

Turn-key contracts (composite transfer of technology for Turn-key contracts (composite transfer of technology for industrialisation):industrialisation):

- agreements for delivery and assembly of a ready-made agreements for delivery and assembly of a ready-made industrial plant. industrial plant.

- often including a guarantee of result, at least assistance often including a guarantee of result, at least assistance during production, etc. during production, etc.

TRANSFER & COMPETITION TRANSFER & COMPETITION LAW (EU)LAW (EU)

Intellectual property is an « exception » to free movement Intellectual property is an « exception » to free movement of goods (justifies restrictions to free movement insofar as of goods (justifies restrictions to free movement insofar as necessary for the protection of the IP right, art. 42 TFEU); necessary for the protection of the IP right, art. 42 TFEU); this can lead to segmentation of marketsthis can lead to segmentation of markets

Principle of exhaustion once on the market with permission Principle of exhaustion once on the market with permission of the right holder (free movement not to be restricted of the right holder (free movement not to be restricted more than necessary for the specific subject-matter of the more than necessary for the specific subject-matter of the right) right)

Further, agreements and practices restricting competition Further, agreements and practices restricting competition that may affect trade between member states are in that may affect trade between member states are in principle prohibited under art. 101 TFEU (see supra) (see principle prohibited under art. 101 TFEU (see supra) (see also the exception also the exception de minimisde minimis and other general rules on and other general rules on exceptions; possibility of block exemptions) exceptions; possibility of block exemptions)

3 relevant block exemptions (1 general, 2 more specific) + 3 relevant block exemptions (1 general, 2 more specific) + « Guidelines for horizontal agreements 2010 » + Guidelines « Guidelines for horizontal agreements 2010 » + Guidelines for TT Agreements 2014for TT Agreements 2014

BLOCK EXEMPTIONS - BLOCK EXEMPTIONS - TTBERTTBER

Block exemption for technology transfer agreements « TTBER » (EU-Block exemption for technology transfer agreements « TTBER » (EU-Reg. 772/2004 > EU-Reg.316/2014) (+ Guidelines), valid until 2026Reg. 772/2004 > EU-Reg.316/2014) (+ Guidelines), valid until 2026

Scope of application: see the definitions in art. 1.Scope of application: see the definitions in art. 1. Concerns license agreements (patent, know how or mixed license Concerns license agreements (patent, know how or mixed license

agreements) (no longer since 2014: software, unless licensed for agreements) (no longer since 2014: software, unless licensed for integration with other products) (license to produce software for resale integration with other products) (license to produce software for resale > VBER, ch. Distribution)> VBER, ch. Distribution)

Scope of the new TTBER is more limited, certain clauses out of scope, Scope of the new TTBER is more limited, certain clauses out of scope, now have to be examined on a case-by-case basis (eg pay for delay now have to be examined on a case-by-case basis (eg pay for delay clause in settlement*, …). See art. 2 (3) for the related clauses clause in settlement*, …). See art. 2 (3) for the related clauses covered by the exemption.covered by the exemption.

* Not immune for antitrust scrutiny in the US either: SC 2013 in * Not immune for antitrust scrutiny in the US either: SC 2013 in FTA/ActavisFTA/Actavis

Exclusion of certain networks in Art. 7Exclusion of certain networks in Art. 7 Duration limited to existence of the IP right (or for know how: as long Duration limited to existence of the IP right (or for know how: as long

as it remains secret) (art. 2) (US law has an even stricter rule: post-as it remains secret) (art. 2) (US law has an even stricter rule: post-patent term royalties are always unlawful, most recently in Kimble v. patent term royalties are always unlawful, most recently in Kimble v. Marvel, SCotUS 22 June 2015, affirming the decision in Brulotte v. Thys Marvel, SCotUS 22 June 2015, affirming the decision in Brulotte v. Thys from 1964)from 1964)

BLOCK EXEMPTIONS - BLOCK EXEMPTIONS - TTBERTTBER

Combined market-share thresholds (art. 3): 20 % on the relevant Combined market-share thresholds (art. 3): 20 % on the relevant technology and product market* for competing undertakings, 30 technology and product market* for competing undertakings, 30 % if not competing % if not competing

(complexity of defining the relevant market)(complexity of defining the relevant market) Black list of hardcore restrictions for competing undertakings in Black list of hardcore restrictions for competing undertakings in

Art. 4, 1 Art. 4, 1 Black list of hardcore restrictions for not competing undertakings: Black list of hardcore restrictions for not competing undertakings:

see Art. 4, 2 see Art. 4, 2 Black list (2014 TTBER) includes all restrictions of passive sales in Black list (2014 TTBER) includes all restrictions of passive sales in

territory of another licensee (unless justified on a case to case territory of another licensee (unless justified on a case to case basis, to recoup investments)basis, to recoup investments)

Black list in art. 5 (excluded restrictions) contains:Black list in art. 5 (excluded restrictions) contains:- exclusive grant-back license; exclusive grant-back license; - termination-on-challenge-clauses;termination-on-challenge-clauses;

Art. 6: Withdrawal of exemption in individual casesArt. 6: Withdrawal of exemption in individual cases

BLOCK EXEMPTIONS - SBERBLOCK EXEMPTIONS - SBER

Block exemption for specialisation agreements (Reg. 1218/2010)Block exemption for specialisation agreements (Reg. 1218/2010)– Scope of application (art. 1), covered by the exemption:Scope of application (art. 1), covered by the exemption:

unilateral specialisationunilateral specialisation reciprocal specialisationreciprocal specialisation joint production agreementsjoint production agreements provisions necessary for their implementation (art. 2 (2))provisions necessary for their implementation (art. 2 (2)) exclusive purchase and/or supply obligations (art. 3 a)exclusive purchase and/or supply obligations (art. 3 a) joint distributijoint distribution (art. 3 b)on (art. 3 b)

– Market share threshold: < 20% in ANY relevant market (art. 3) Market share threshold: < 20% in ANY relevant market (art. 3) (where specialisation relates to intermediary products used (where specialisation relates to intermediary products used for production of downstream products)for production of downstream products)

– Hardcore restrictions (prohibited provisions) in art. 4 a, b, cHardcore restrictions (prohibited provisions) in art. 4 a, b, c– Except permitted provisions in art. 4 (b) (i) and (ii) Except permitted provisions in art. 4 (b) (i) and (ii)

BLOCK EXEMPTIONS - BLOCK EXEMPTIONS - RDBERRDBER

Block exemption for research and development agreements Block exemption for research and development agreements (R&D) (Reg. 1217/2010)(R&D) (Reg. 1217/2010)– Scope of application of the exemption:Scope of application of the exemption:– R& D agreements as defined in art. 1:R& D agreements as defined in art. 1:

(i) joint R&D with joint exploitation (i) joint R&D with joint exploitation (ii) joint exploitation of the results of prior joint R & D;(ii) joint exploitation of the results of prior joint R & D; (iii) joint R & D excluding joint exploitation;(iii) joint R & D excluding joint exploitation; iv) paid-for R & D and joint exploitation;iv) paid-for R & D and joint exploitation; v) joint exploitation of the results of prior paid-for R & v) joint exploitation of the results of prior paid-for R &

D; orD; or (vi) paid-for R & D excluding joint exploitation.(vi) paid-for R & D excluding joint exploitation.

– Provisions necessary for their implementation (art. 2, 2)Provisions necessary for their implementation (art. 2, 2)

BLOCK EXEMPTIONS - BLOCK EXEMPTIONS - RDBERRDBER

Block exemption for research and development agreements Block exemption for research and development agreements (R&D) (Reg. 1217/2010) - (R&D) (Reg. 1217/2010) - Conditions for the exemption:Conditions for the exemption:

All parties have access to the results for further All parties have access to the results for further research or exploitation (art. 3,2) research or exploitation (art. 3,2)

Unless joint exploitation agreed, freedom of Unless joint exploitation agreed, freedom of independent exploitation of the joint results and any independent exploitation of the joint results and any pre-existing know how (art. 3,2)pre-existing know how (art. 3,2)

Joint exploitation limited to results protected by IP Joint exploitation limited to results protected by IP rights or constituting know-how (art. 3, 3)rights or constituting know-how (art. 3, 3)

– Market share threshold in art. 4: if parties are Market share threshold in art. 4: if parties are competitors, combined market share < 25 %competitors, combined market share < 25 %

– Black list of prohibited clauses (hardcore restrictions) in Black list of prohibited clauses (hardcore restrictions) in art. 5art. 5

– 2 further prohibitions in art. 62 further prohibitions in art. 6

INTERNATIONAL TRANSFER INTERNATIONAL TRANSFER – DEVELOPING COUNTRIES – DEVELOPING COUNTRIES

Specific problems of developing countries: Specific problems of developing countries: - Need for technology (technological deficit) Need for technology (technological deficit) - Difficulties in obtaining technology: amount of royalties, Difficulties in obtaining technology: amount of royalties,

export prohibitions or other conditions imposed (purchase export prohibitions or other conditions imposed (purchase obligations) by licensor upon licensee; no guarantee of result; obligations) by licensor upon licensee; no guarantee of result;

Reaction of developing countries (1960’s): regulation, control, Reaction of developing countries (1960’s): regulation, control, ……

International agreements lead to some liberalisation:International agreements lead to some liberalisation:- Bilateral investment treaties (s. next chapter) Bilateral investment treaties (s. next chapter) - Some codes of conduct, e.g. OECD Guidelines for Some codes of conduct, e.g. OECD Guidelines for

multinational enterprisesmultinational enterprises- TRIPS Agreement TRIPS Agreement - EU Cotonou Agreement EU Cotonou Agreement

INTERNATIONAL TRANSFER INTERNATIONAL TRANSFER – DEVELOPING COUNTRIES.– DEVELOPING COUNTRIES.

TRIPS AgreementTRIPS Agreement- On the one side obligations to grant protection to foreign IP On the one side obligations to grant protection to foreign IP

rights rights - On the other side possibility of compulsory licensing (art. 31 On the other side possibility of compulsory licensing (art. 31

TRIPS)TRIPS)- Industrialised countries engaged themselves to promote transfer Industrialised countries engaged themselves to promote transfer

of technology to developing countries (art. 66 II TRIPS)of technology to developing countries (art. 66 II TRIPS)- Medicine: Medicine: Doha declaration on the TRIPS agreement and public Doha declaration on the TRIPS agreement and public

health (patents v. safeguard measures) + additional waiver of health (patents v. safeguard measures) + additional waiver of Aug 30, 2003 concerning § 6 Doha Decl. (compulsory license Aug 30, 2003 concerning § 6 Doha Decl. (compulsory license may also be used for export to other countries lacking may also be used for export to other countries lacking production capacity) (to be turned into a permanent amendment production capacity) (to be turned into a permanent amendment of TRIPS, not yet ratified)of TRIPS, not yet ratified)

- Access to traditional agricultural knowledge: see also the FAO Access to traditional agricultural knowledge: see also the FAO Treaty on Plant Genetic Resources for Food and Agriculture (in Treaty on Plant Genetic Resources for Food and Agriculture (in force 2004)force 2004)

EU / Cotonou Agreement 2000EU / Cotonou Agreement 2000

IP PROTECTION – IP PROTECTION – COMPLIANCE COMPLIANCE

TRIPS Agreement contains rules on compliance and TRIPS Agreement contains rules on compliance and combating counterfeiting:combating counterfeiting:

- States must provide for effective sanctions and remedies. States must provide for effective sanctions and remedies. - esp. rules on control and release of goods by customs esp. rules on control and release of goods by customs

authorities: conservatory measures (suspension of release), authorities: conservatory measures (suspension of release), dispute resolution, indemnification in case of wrongful dispute resolution, indemnification in case of wrongful demand of detention, sanctions for IP violations, disposal of demand of detention, sanctions for IP violations, disposal of the goods (out of trade) the goods (out of trade)

- Dispute USA v. China in WTO deals i.a. with these questionsDispute USA v. China in WTO deals i.a. with these questions WCO (World Customs Organisation)WCO (World Customs Organisation)- Model for National Legislation to give customs additional Model for National Legislation to give customs additional

powers to implement the Agreement on Trade-Related powers to implement the Agreement on Trade-Related Aspects of Intellectual Property RightsAspects of Intellectual Property Rights

- «SECURE » - WCO Framework to secure global trade: «SECURE » - WCO Framework to secure global trade: project suspended in 2008project suspended in 2008

IP PROTECTION – IP PROTECTION – COMPLIANCE (EU)COMPLIANCE (EU)

Combating counterfeiting in the EU – implementing TRIPS obligations: Combating counterfeiting in the EU – implementing TRIPS obligations: Reg. 608/2013 (replacing 1383/2003 since 1 Jan 2014) concerning Reg. 608/2013 (replacing 1383/2003 since 1 Jan 2014) concerning customs enforcement of IP rights : procedures concerning goods customs enforcement of IP rights : procedures concerning goods suspected of infringing certain IP rights and the measures to be taken suspected of infringing certain IP rights and the measures to be taken against goods found to have infringed such rights. against goods found to have infringed such rights. Which violations Which violations are combated ? are combated ?

- Counterfeit goods (fake trademarks) Counterfeit goods (fake trademarks) - Pirated goods (infringing copyright or design right) Pirated goods (infringing copyright or design right) - Goods infringing a patent, a protection certificate, a plant variety Goods infringing a patent, a protection certificate, a plant variety

right, a designation of origin or geographical indication or designationright, a designation of origin or geographical indication or designation- Moulds and matrices for the manufacturing of goods infringing IP Moulds and matrices for the manufacturing of goods infringing IP

rightsrights- From 2014: also(unregistered) trade names (if protected under From 2014: also(unregistered) trade names (if protected under

national law), topographies, utility models, technology circumvention national law), topographies, utility models, technology circumvention devices (art. 2).devices (art. 2).

Out of the scopeOut of the scope- Illegal parallel trade of legally produced productsIllegal parallel trade of legally produced products- Overruns (excess quantity by licensed producer)Overruns (excess quantity by licensed producer)

IP PROTECTION - IP PROTECTION - COMPLIANCE (EU)COMPLIANCE (EU)

Control in case of import, export, transit (EcJ in C-446/09 Control in case of import, export, transit (EcJ in C-446/09 PhilipsPhilips & 495/09 & 495/09 Nokia: Nokia: in case of external transit only if sufficient in case of external transit only if sufficient grounds for suspecting ‘diversion’, i.e. that they will be put on grounds for suspecting ‘diversion’, i.e. that they will be put on the market in the EU)(Proposed new EU trademark rules are the market in the EU)(Proposed new EU trademark rules are however tightening the rule, but without prejudice to WTO rules)however tightening the rule, but without prejudice to WTO rules)

Not: travellers personal luggage, unless commercial nature (art. Not: travellers personal luggage, unless commercial nature (art. 1 IV). Exception does not apply to goods sent to customer 1 IV). Exception does not apply to goods sent to customer (bought on line): C-98/13 (bought on line): C-98/13 BlomqvistBlomqvist..

Custom authorities have to take appropriate measures Custom authorities have to take appropriate measures Art. 3 specifies who is entitled to apply for a measure by custom Art. 3 specifies who is entitled to apply for a measure by custom

authorityauthority Art. 4 ff. application procedureArt. 4 ff. application procedure Art. 7 ff. decision procedure. Art. 7 ff. decision procedure. Right holder has to pay the costs incurred by customs (and can Right holder has to pay the costs incurred by customs (and can

claim compensation from the infringer) (art. 29)claim compensation from the infringer) (art. 29) ECJ 9 April 2014 in C-583/12 ECJ 9 April 2014 in C-583/12 SintaxSintax: authorities may also : authorities may also

investigate on their own initiativeinvestigate on their own initiative

IP PROTECTION – IP PROTECTION – COMPLIANCE (EU)COMPLIANCE (EU)

Ch. III deals with the action by the customs authorities:Ch. III deals with the action by the customs authorities:- S. 1 (art. 17 ff.) suspension of release / detentionS. 1 (art. 17 ff.) suspension of release / detention- S. 2. (art. 23 ff.) destruction. S. 2. (art. 23 ff.) destruction. - New Regulation extends and generalizes the simplified New Regulation extends and generalizes the simplified

procedure for seizure and early destruction of counterfeit procedure for seizure and early destruction of counterfeit goods. Legal proceedings not necessary for destruction of goods. Legal proceedings not necessary for destruction of small quantities (eg online purchases sent by post)(art. 26) small quantities (eg online purchases sent by post)(art. 26) or 2° if holder does not oppose within 10 days (art. 22). or 2° if holder does not oppose within 10 days (art. 22). Simplified procedure applies when rights-holder opts in.Simplified procedure applies when rights-holder opts in.

Ch. V on exchange of informationCh. V on exchange of information

IP PROTECTION – ACTAIP PROTECTION – ACTA Anti-Counterfeiting Trade Agreement (ACTA), 1 October 2011:Anti-Counterfeiting Trade Agreement (ACTA), 1 October 2011:- Some industrialised countries consider WTO and WIPO not - Some industrialised countries consider WTO and WIPO not

“tough” enough on counterfeiting and piracy“tough” enough on counterfeiting and piracy- - Signed by US, CND, Japan Korea, Austr NZ, Morocco, Singapore; Signed by US, CND, Japan Korea, Austr NZ, Morocco, Singapore;

to be signed by by EU 27 + Switzerland, Mexico. to be signed by by EU 27 + Switzerland, Mexico. BUT REJECTED BUT REJECTED by EU Parliamentby EU Parliament..

- Compliance and remedies in respect of all IP rights. US esp. keen Compliance and remedies in respect of all IP rights. US esp. keen on copyright, EU on geographical indicators and design.on copyright, EU on geographical indicators and design.

Some general principles:Some general principles:-- no direct effectno direct effect- no obligation of measures by a country under whose law the right no obligation of measures by a country under whose law the right

in IP is not protectedin IP is not protected- no obligation to disclose information contrary to privacy laws etc.no obligation to disclose information contrary to privacy laws etc.- efficient and deterrent remedies, but proportionality principleefficient and deterrent remedies, but proportionality principle- Specific rules for which IP rights each of the measures is requiredSpecific rules for which IP rights each of the measures is required

IP PROTECTION – ACTAIP PROTECTION – ACTA

Required enforcement mechanisms and measuresRequired enforcement mechanisms and measures1. Civil enforcement: injunctions, damages, transfer of profits, 1. Civil enforcement: injunctions, damages, transfer of profits,

destruction, order for information, provisional measures destruction, order for information, provisional measures incl. seizure of suspect goodsincl. seizure of suspect goods

2. “Border measures” incl. goods in transit2. “Border measures” incl. goods in transit3. Criminal enforcement3. Criminal enforcement4. Enforcement in the digital environment, incl.4. Enforcement in the digital environment, incl. - information duties for ISP (unless against privacy law)- information duties for ISP (unless against privacy law) - remedies against circumvention of technological protection - remedies against circumvention of technological protection

measures (DRM etc.)measures (DRM etc.)