Design, Technology, Innovation and Being a Stick!

Non-Assertion Agreement


04.10.21 Posted in Uncategorized by

81. 6. Nov. around 171 (rule); see also Mueller, 76 Wash. L. Rev. 62 (“A in-transit licensing agreement only defers licensing payments to the period when they most accurately indicate the actual value of the search tool to the user”). 82. Bayer AG v. Housey Pharms., Inc., 228 F. Supp. 2d 467, 471-72 (D. Del.

2002). But see Robin C. Feldman, The Insuffficiency of Antitrust Analysis for Patent Misuse, 55 Hastings L.J. 399, 448 (2003) (“Rules of patent abuse based on the voluntary nature of the agreement do not recognize that an agreement may be in the interests of both parties and is nevertheless contrary to the interests of the patent system as a whole”). (Footnote omitted). 29. See Lear v. Adkins, 395 U.S. 653, 674 (1969) (“E]nforcing [a] provision of the treaty [which would require a licensee to continue to pay royalties while challenging the validity of the patent in court] would undermine the strong federal policy that favours the full and free use of ideas in the public domain.”); See also MedImmune, Inc. v. Genentech, Inc., 127 pp.

Ct. 764, 777 (2007) (“We believe that [a licensee] is not obligated to break or terminate his 1997 licence agreement before seeking a judgment in the federal court that the underlying patent is invalid, inescapable or uninjured”). Agencies have already found that grants, particularly those that are not exclusive, can be effective for licensees and licensees. (44) A grantback can facilitate the granting of a downstream licence because it provides a good way to assess the intellectual property granted, a panelist stated, stating that a Grantback “is a useful way for the original donor to obtain a certain value [if] an initial contract may be difficult to write.” (45) In addition, a non-exclusive subsidy “may serve as an alternative [to] increasing royalties where the nature and value of future improvements are uncertain.” (46) Agencies recognize that a grant can promote risk sharing and “reward the licensee for other innovations based on the technology licensed or communicated by it.” (47) Participants stated that a grantback, such as a non-assertion clause, could also facilitate negotiations (48) and promote the exchange of information by raising a licence giver`s fear of a blocking patent position in the future. (49) 55. See IP antitrust guidelines 5.6; Part III.A; See also on November 6 at 128-29 (rule) (debate on how grantbacks and non-assertion clauses can promote cooperation and exchange of information between licensees and licensees). Participants discussed several analytical approaches to assessing competition issues that have been raised by the licensing practices discussed in this chapter, including non-assertion clauses and subsidies. For example, a group of participants supported an assessment of the likely competitive effects on relevant product and innovation markets. (83) Although it was agreed that such an analysis was desirable, other participants questioned its feasibility. (84) Another participant proposed the use of a market screen and asked: “Do the companies that enter into this agreement have common market power?” (85) Taking into account market structure, market power and complementarities may, according to the panellist, lead to a proper assessment of the parties` incentives to engage in effective and non-competitive behaviour, or vice versa. (86) However, participants felt that market power was not always easy to determine. (87) One participant therefore argued in favour of applying the doctrine of ancillary restrictions to consider a potentially anti-competitive provision as a “heuristic approach” that “defines certain rules that are administrative at the time you enter into an agreement and are a little easy to understand and apply.” In some cases, another participant felt that the doctrine was not useful when there were no restrictions on the use of technology, as is the case in the case of a reciprocal or unilateral non-asserting agreement.



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