As Commissioner Monti has recently stated, "technology transfer activities have evolved considerably during the last few years. It appears that greater joint efforts and more complex licensing agreements are now necessary to maintain such momentum considering the increasing complexity of new technologies".
Regulation 240/96, which is currently in force, is excessively formal and legalistic to face the new situation. Moreover, it doesn't correspond to the more economic approach adopted in the new rules on distribution and horizontal cooperative agreements.
As such, it has been considered necessary to revise the Regulation. The draft text for the new regulation was adopted by the Commission for consultation in 2003. The Commission received more than 70 comments from both sides of the Atlantic. After analysing the comments, substantial modifications were made to the draft Regulation.
The main aspects of the new Regulation are as follows:
a) A broader scope of application
It is proposed that the new Regulation should cover not only patent and know-how licences but also author's rights regarding software and designs.
b) A new philosophy
The new block exemption regulation will only contain one short, clear list of hard core restrictions, similar to the black list in the other block exemption regulations. An agreement containing a hard core restriction cannot benefit from a block exemption and, in the context of an individual evaluation, it is unlikely that it will meet the conditions set out in article 81(3). Anything not explicitly excluded from the block exemption is covered.
c) Distinction between competitors and non-competitors
The new rules establish a clear distinction between licensing agreements between competitors and those between non-competitors. Competition problems are much more likely to arise as regards licensing agreements between competitors than between non-competitors, which means, in particular, that the list of hard core restrictions should be different.
d) Market share thresholds
The scope of application of the block exemption Regulation shall be limited by market share thresholds: 20% for licence agreements between competitors and 30% for licence agreements between non-competitors.
e) Hard core restrictions
As regards license agreements between competitors, the hard core restrictions will be price fixing, limiting production or sales, and market or client sharing. Restricting the licensee's capacity to exploit its own technology or that of the parties who are to carry out research and development, shall also be considered a hard core restriction, unless indispensable to prevent the know-how under the licence from being revealed. Following the comments received, the draft was modified and the following are no longer considered to be hard core restrictions: the obligation for the licensee in a reciprocal arrangement to only exploit the technology granted in one or several technical sectors of use, territorial or client restrictions between the licensor and licensee under a non-reciprocal arrangement and the obligation for the licensee to only deliver to a given client when the license is granted in order to provide the latter with a second source of supply.
As regards licensing agreements between non-competitors, imposing minimum or fixed prices for sales to third parties constitutes a hard core restriction. In principle, the licensee should also be free to choose the territory in which he wishes to sell or the clients to whom he wishes to sell. However, the draft block exemption regulation covers restrictions on active and passive sales between the licensor and licensee with unlimited duration, in the exclusive territory reserved to the other party. It was also proposed that restrictions on active sales between the licensees' territories should be covered with unlimited duration. In the light of the comments received, the new draft covers, in general, all restrictions on sale, active and passive, imposed on the licensor and any restriction of active sales imposed on the licensee. In the same way, the restriction on other licensees' passive sales in the exclusive territory of a given licensee is excluded during a period of two years as from the date on which the product including the licensed technology is put on the market for the first time by the licensee in question.
f) Conditions
There are several restrictions which, even though they are not treated as hard core restrictions, are not covered by the block exemption. In particular, this refers to the exclusive obligation imposed on the licensee to transfer back or to transfer severable improvements, as well as no-challenge clauses. It is suggested that such restrictions should not be included in the block exemption due to their potentially negative impact on innovation. Nonetheless, in contrast to the case of agreements containing a hard core restriction (where the block exemption is lost for the whole agreement), for these five restrictions, the benefit is not lost for the rest of the agreement. Only the particular restriction will not enjoy the block exemption. Consequently, an individual evaluation will be necessary in this case.
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