LPC Law Notes International Intellectual Property Notes
A collection of the best International Intellectual Property notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor". In short these are what we believe to be the strongest set of International Intellectual Property notes available in the UK this year. This...
The following is a more accessible plain text extract of the PDF sample above, taken from our International Intellectual Property Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:
cl = clause
LO = licensor
LE = licensee
EC = European commission
Amend a patent licence so that it complies with an EU reg
In the exam: wouldn’t be asked to draft, but would be asked to explain what you would delete or redraft
STEP 1- Does the agreement breach/infringe art 101 TFEU/s.2(1) CA 1998
Art 101 TFEU/s.2 CA 1998 Wording:
Agreement = Patent License
Between undertakings = two economically independent entities
May affect trade between MS = Between two different MS, cross border element
Has as its object or effect the prevention, restriction or distortion of competition without the internal market = need to look at each proposal in turn to determine the degree to which it raises Art 101/s.2(1) concerns
Proposed patent licence | |||
---|---|---|---|
Proposed term | (a) Art. 101 infringement – potential effect on competition? | (b) What does the TTBE have to say about these terms? | (c) Amendments to licence? |
1. LO will grant LE exclusive licence to manufacture | Potentially yes – LO promise not to license to anyone else in the territory this affects trade within the EU by changing their behaviour, it will also distort competition within the EU BUT if exclusive territory was the only restriction, EC would be unlikely to challenge as encourages licensee to work harder | No restriction | n/a |
2. LE only permitted to use the patents for laptop fans | Potentially yes - restricts manufacturer in how he uses the article, could have other applications BUT they are only being granted rights that they wouldn’t have had anyway, so any grant is increasing their commercial freedom | No restriction | n/a |
3. No limit on the number of fans produced, but must pay 30% royalty | No – paying a royalty is not per se anti-competitive | No restriction | n/a |
4. Minimum price of 8 per fan | Yes, minimum price fixing (101(1)(a)) object Stipulation as price, restricts LE behaviour so must distort trade. Given free reign, LE might well price below this level in order to responds to competitive pressures. LO is clearly trying to preserve its cachet and maximise earnings | Article 4(2)(a) – hardcore restriction – restricting the party's ability to determine its prices (4(1)(a) if the parties are competing) But can have a maximum price and a recommended If using a recommended price then must not be enforced as if it were a minimum price | Change “Net Sales Price” in cl 1.1 to “Recommended Sales Price” in order to avoid fixing the price |
5. LE can sell anywhere in Europe, except France | Yes, export ban (101(1)(b)) object LO is clearly contemplating partitioning the market between exclusive licensees. Partitioning the market is an obvious way of restricting competition | Article 4(2)(b)(ii) – hardcore restriction - export ban (4(1)(c) if parties are competing) With this you can stop active sales but can’t restrict passive selling except during the first two years you allocate a territory to another licensee Can restrict passive sales for two years if there is another exclusive licensee in the jurisdiction | Change definition of “Territory” to exclude France for 2 years only Can’t active sell to France, but can passive sell after 2 years – write a clause that gives effect to this. Also see cl 2.1 in the amended licence for an alternative |
6. If LE discovers improvements leading to new patent, will assign the patent to LO | Yes (effect needs to be proved) obligation on LE to assign improvements patents back to LO, this is an obligation to assign something to LO which in law is theirs to sell or licence freely, the effect is to distort trade | Exclusive restriction – art. 5(1)(b) cant have obligation on LE to assign rights or grant exclusive license to LO on its own improvements BUT you can have an obligation for LE to grant non-exclusive license to LO on its own improvements | Remove the last sentence of cl. 5 to remove the obligation to assign any patents based on improvements |
7. LO will licence LE new patents which arise from improvements | Yes, similar to 6, but flipped for the other party LO are not free to do as they wish with their patent, they are compelled to licence it to LE this distorts the market | No restriction | |
8. B will not challenge any of A’s IP rights | Yes (effect needs to be proved) if flaws in the patent do become apparent it is in LE best interest to get LO monopoly removed and then LE can compete with LO, this therefore restricts competition | Art. 5(1)(c) – limiting the opportunity of the licensor to don’t have an obligation not to challenge the validity of IP rights But can have a clause saying that if one party challenges IP rights, the other party can terminate the agreement | Remove clause 9 so that the B may challenge, possibly add a clause saying that if B challenges, A may terminate the agreement |
9. The licence will remain in force as long as their patent remains in existence (subject to termination for breaches of the licence) | No | Can ignore, because have no anti-competitive effects | Change clause 8.1 – (remove 20 years) add “for as long as the patent remains in existence This gives effect to the parties’ intentions |
10. Upon expiry or termination, LE allowed to sell off its remaining stock | No | Can ignore, because have no anti-competitive effects | Cl 8.3(f) – remove this clause in order to give... |
Buy the full version of these notes or essay plans and more in our International Intellectual Property Notes.
A collection of the best International Intellectual Property notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor". In short these are what we believe to be the strongest set of International Intellectual Property notes available in the UK this year. This...
Ask questions 🙋 Get answers 📔 It's simple 👁️👄👁️
Our AI is educated by the highest scoring students across all subjects and schools. Join hundreds of your peers today.
Get Started