INTERNATIONAL IP LICENSING: EUROPE March 7, Jeremy Schrire

Transcription

1 INTERNATIONAL IP LICENSING: EUROPE March 7, 2017 Jeremy Schrire

2 INTRODUCTION 1. Overview 2. If you choose US law, can you ignore European laws? 3. If your governing law is a European law can you choose any European country s law? what are the implications? 4. Jurisdiction and dispute resolution considerations 5. Implications of Brexit

3 1. OVERVIEW Commercial context Territorial issues IP rights in the EU are (mostly) national EU unitary patent update

4 2. IF YOU CHOOSE US LAW, CAN YOU IGNORE EUROPEAN LAWS? Will your choice of law be recognised? Rome I: the signatories to a contract may choose the law applicable to the whole or part of the contract But remember mandatory local laws antitrust law: Articles 101 and 102 EU Treaty

5 ANTI-TRUST LAW Prohibits: All agreements between undertakings which may affect trade between member states and which have as their object or effect the prevention, restriction or distortion of competition within the common market (Article 101(1))

6 Exemption for agreements which contribute to improving the production or distribution of goods or to promoting technical or economic progress, while allowing consumers a fair share of the resulting benefit provided: the restriction(s) are indispensable; and the agreements are not foreclosing (Article 101(3))

7 (A) VERTICAL AGREEMENTS BLOCK EXEMPTION Application and Relevance Prohibited: Total Export bans/customer allocation clauses the distinction between active and passive selling exhaustion of rights where does the Internet fit into all of this? Price fixing (Leegin compared with the EU approach)

8 (B) TECHNOLOGY TRANSFER BLOCK EXEMPTION Ambit: certain IP rights only Patents, know how, design rights, software copyright Stricter rules where parties are competitors and even stricter rules where there is reciprocity (cross-licensing)

9 PROHIBITED IN ALL CASES Price fixing Allocation of markets or customers but: can have restrictions on active and passive sales in exclusive territory/customer group reserved for licensor can restrict licence to licensee s own use (e.g. incorporation into other products) Cannot restrict licensee from carrying out its own R&D Cannot prevent licensee from challenging validity of licensor s IP Licensor cannot terminate the agreement on a challenge by the licensee of the validity of licensor s IP where the licence is nonexclusive Cannot require the licensee to exclusively license back or assign any new applications or any (severable or non-severable) improvements of the technology

10 (C) SPECIAL RULES RE DOMINANCE Pricing Refusal to Supply Discrimination Tie-ins

11 (D) SANCTIONS Unenforceability Fines (up to 10% of group world-wide turnover) Microsoft 860 m Intel 1.06 bn 3rd party suits

12 3. IF YOUR GOVERNING LAW IS A EUROPEAN LAW, WHAT ARE THE IMPLICATIONS? (A) CIVIL LAW Good faith duty Less emphasis on precedent Reliance on statutes and codes More judicial intervention: judge as investigator (B) ENGLISH LAW Common law Interpretation issues English law is not the same as US law (e.g. the small matter of a condition )

13 4. JURISDICTION AND DISPUTE RESOLUTION CONSIDERATIONS Litigation Convenience Credibility Procedure Exclusive v non-exclusive Recognition outside the jurisdiction

14 Brussels Regulation Automatic Recognition of EU judgments Arbitration New York Convention Rules and venue Appeals

15 5. IMPLICATIONS OF BREXIT Timing Anti-trust Applicable law and jurisdiction

16 FOR FURTHER INFORMATION Jeremy Schrire Keystone Law m +44 (0) t +44 (0) e jeremy.schrire@keystonelaw.co.uk w