In the court decision of 7 July 2016 (C-567/14, Genentech) the Court of Justice of the European Union reaffirmed the solution as presented by the Court in its decision of 12 May 1989 (C-567/14, Ottung): the prohibition on anti-competitive agreements (article 101, §1 TFEU) does not affect the contractual obligation of a fee for the use of a technology that is not or is no longer covered by a patent, on the condition that the licensee is at every moment in the possibility to end the existing agreement.
The Court had already stated that such a clause could be the reflection of the value parties give from a commercial point of view to the exploitation possibilities the license agreement is about.
In the most recent case, the question was treated from a small different point of view, but the solution firmly stayed the same. The Court underlined the importance of the fact that a licensee is free to end the agreement at all time.
The license concerned (1992) covered a worldwide non-exclusive license regarding certain technology, which was protected by a European and two American patents. The European patent was declared null and void several years after by the OEB (1999), while the American patents, although likewise attacked, remained in place.
Next, the licensee ended the agreement, while the American patents were sill applicable.
In this case, the Court regarded the two American patents, which protected the technology concerned as the only relevant patents: the patents were not declared null and void, but the Court held that the licensor did not use the patents after the termination of the agreement (counterfeit).
The dispute arose because the licensee failed to pay the royalties as was foreseen by the license agreement. When considering the dispute before him, the arbitrator accepted the responsibility of the licensee to pay the royalties. The punishment he had foreseen was the subject of an action for annulment with the Court of Appeal in Paris, which was asked to render a judgment regarding the compatibility of the solution rendered by the arbitrator with article 101, §1 TFEU (prohibition on anti-competitive agreements).
The arbitrator had reached its solution taking into account the German law regarding license agreements. He was of the opinion that the commercial purpose of the parties was to lighten the risk on the licensee to face infringement proceedings of the licensor, while using the technology. This view was opposed to the opinion of the licensee, who argued that with the absence of an infringement, no compensation needed to be paid.
Thus, the relevant question comprised of knowing if article 101, §1 TFEU precludes that an obligation within such an agreement is put on the licensee to pay a compensation fee for use of the technology, in the period when a license is applicable, while a annulment of the patent is still a possibility or, like in the case at hand, a declaration non-infringement of the patents, which protect this technology, by other parties.
The Court of Justice pointed out that the solution put forward in the decision of 12 May 1989 is a fortiori applicable in this case. While a license agreement is in force, the payment is due, even after the patent expires. Thus, this also applies when the patent is still in force (which was in casu the situation, the American patents stayed applicable until termination of the license agreement by the licensee and where not declared null and void).
In our opinion two main elements played a role when the Court considered the case, being on the one hand, the fact that in German law regarding license agreements, a non-infringement has no influence on the payment of the royalties. The reason is that the commercial purpose of the parties consists in protecting the licensee for the risk for infringement. On the other hand, another element is the fact that the licensee has the possibility, as was in the previous case, to terminate the agreement at every moment.
The payment of royalties regarding a patent, while it has become inapplicable or declared null and void, or when there is no infringement, primarily is debated in the framework of anti-competitive restrictions. As the reasoning of the case clearly indicates, the particularities of every separate case will have to be considered.
Fernand de Visscher
PDF document The_payment_of_the_royalties-_EN.pdf:
L. de Brouwer "Le droit des jeux plublicitaires", Larcier, 2016.
Parmi les méthodes de promotion des ventes, les jeux publicitaires occupent une place singulière : les loteries, tombolas, jeux et concours publicitaires n’offrent en effet au consommateur que l’espoir d’un gain, mais chargé, il est vrai, d’un pouvoir attractif souvent convaincant.
Les nombreuses règles légales qui les gouvernent se situent à la croisée de deux secteurs d’activités réglementés de manière presque antinomique : d’un côté, les loteries et les jeux de hasard sur lesquels l’État exerce un monopole et un contrôle souverain ; de l’autre, le commerce où règnent les principes de liberté et de libre concurrence, mais encadrés par les dispositions protectrices des consommateurs.
La mise en œuvre d’un jeu publicitaire oblige son organisateur à se poser des questions essentielles avant de porter son choix sur l’une ou l’autre formule : concours ou loterie ? jeu ou jeu de hasard ? opération à lancer sur des supports classiques, on air ou on line, via un site internet ou des réseaux sociaux ? lots en espèces ou en nature ? intervention d’un huissier de justice ? risque de disqualification ? Quant à la rédaction du règlement,
il soulève d’autres questions : les clauses sont-elles toujours licites, pertinentes et opposables à chacun des participants ?
Le lecteur trouvera dans le présent ouvrage des réponses aux multiples questions que posent le choix, la mise en œuvre et la gestion des jeux publicitaires. L’ensemble des règles qui leur sont applicables sont exposées d’une manière ordonnée et synthétique, ce qui n’exclut ni l’approfondissement ni la critique. Les nombreux exemples pratiques, tous tirés de la jurisprudence, illustrent le commentaire. À dessein, l’auteur utilise un langage clair et accessible à tous ceux auxquels l’ouvrage s’adresse : les professionnels de la communication et du marketing, les juristes et les joueurs.
Within the European Union, the rules on processing personal data are still governed by the Directive 1995/46/EC. These rules were conceived before the era of social networks, big data and the Internet of things, and were often misunderstood and misapplied by companies and organizations. Its revision has been at the agenda since 2012. After several years of intensive discussions, a final text was finally adopted in December 2015. It should be voted by the European Union legislator and published in the Official Journal in the following weeks.
The modernization of the system of protection of personal data should have important practical consequences for most companies and organizations. In particular, those who, within these organizations, are responsible for ensuring the respect of the rules, will be faced with new multiple challenges. It is not only about applying new legal requirements, carrying out new administrative procedures or adapting the phrasing of some clauses of general conditions or privacy policies. The requirements of the regulation, mainly through the concept called "accountability", go well beyond that.
In this document we give a complete overview of these new obligations, but also of new powers which will be allocated to the regulator, at a national and at the European level. These powers can result in investigations and investigative measures, positive injunctions and even administrative fines.
Publication of the book “Actualités en droits intellectuels” under the coordination of Benjamin Docquir
This book includes two studies authored by lawyers of Simont Braun : Philippe Campolini discusses the recent developments on the creation of a European patent with unitary effect and the future Unified Patent Court, and Benjamin Docquir (in collaboration with Edouard Cruysmans) examines the limits of copyright in the digital environment, in particular the exceptions for research and e-learning, the private copying levies, etc
The book also reports on several other topics of great relevance in the field of intellectual property rights: the proposal for a Directive on business secrets, the recent case law of the European Court of justice on registered designs, customs measures, injunctions under the new Code of economic law, etc.
Pursuant to article 1, §1 and article 3 §3 of the Law of 30 June 1994 concerning copyrights and neighbouring rights (hereafter: Author Rights):
- the author of a literary or artistic work has the exclusive right to reproduce the work or to authorize reproduction by any means andin any form (whether directly or indirectly, temporarily or permanently, or in whole or in part) ; and
- the author may assign the Author Rights with respect to the works created by an author in the execution of an employment contract or a statutory function to the employer, provided (i) that the transfer of Author Rights is expressly agreed and (ii) that the creation of the work is within the scope of the employment contract or statutory function.
The transfer of these Author Rights is sometimes remunerated. Until recently, the tax and social security treatment of this income was unclear.
The Belgian rules on invention patents underwent certain changes in 2011, one of which was the introduction of a restoration procedure (1). This restoration procedure, which came into effect on 13 March 2014, allows applicants for or holders of patents that missed a deadline in procedures before the Belgian Office for Intellectual Property (OPRI), to commence proceedings before it aimed at restoring the rights lost owing to the failure. The main cases in contemplation are failure to meet the deadline for paying the annual taxes or that for filing a translation of a European patent (which, for some time now, has only concerned European patents issued in English).
THE SUPREME COURT ORDERS A COMPLETE, DETAILED EXAMINATION OF THE PRIMA FACIE VALIDITY OF THE PATENT INVOKED IN SUPPORT OF A REQUEST FOR A COUNTERFEIT SEIZURE
Supreme Court, 12 September 2014, Syral Belgium v. Roquette Frères, C.13.0232.N, available here.
TEXT AND CONTEXT
Section 1369bis/1 of the Belgian Judicial Code provides that the court ruling on a petition for a counterfeit seizure must examine the prima facie validity of the intellectual property right invoked.
In order to challenge this prima facie validity, defendants frequently cite cases in which the patent relied on has already been ruled to be void. These may be either first instance decisions that are not yet final (otherwise, were the patent to be finally set aside, it could not be founded on for a counterfeit seizure petition) or foreign decisions whose grounds the defendant argues must apply by analogy to the patent relied on in Belgium.
However, challenging the prima facie validity of a patent based on a decision from foreign court or that is not res iudicata is often no easy task. Based on the rule that issued patents are in principle to be considered valid, the Belgian courts often reject such arguments on the ground that a patent is to be considered valid until revoked by a final decision or, at least, one that is provisionally enforceable. Foreign decisions are often rejected outright by the court on the ground – correct in and of itself, though questionable as to its relevance – that they relate to foreign rights that are of no effect in Belgium.
EUROPEAN COURT OF JUSTICE AFFIRMS STRONG PROTECTION FOR COMMUNITY DESIGN
Court of Justice 19 June 2014, Karen Millen Fashions Ltd. vs Dunnes Stores & Dunnes Stores (Limerick) Ltd.,C/345-13, click here
TEXT & CONTEXT :
Karen Millen Fashion (in short “KMF”), is an English brand that produces and sells women’s clothing. In 2005 KMF designed and sold in Ireland a striped shirt and a black knit top. Dunnes, a retailing group in Ireland that also sells women’s clothing, bought these garments from a KMF outlet, had copies thereof produced abroad and afterwards started selling those copies in stores in Ireland in 2006.
The Council Regulation n° 6/2002 on community designs (hereinafter the “Regulation”)provides for intellectual property protection via an unregistered community design. This protection relates to the appearance of the whole or a part of a product and has a duration of 3 years as from the date the design was first made available to the public within the Community. Only designs that are new and that show individual character are eligible for this protection. No other formalities need to be fulfilled. This unregistered design right grants its owner the exclusive right to use the design and to prevent any unauthorized third party from using the same, when the contested use results from copying the design.
PROTECTION FOR MEDICINAL PRODUCTS – Recent case-law developments of the Court of Justice of the European Union (December 2013)
Between a patent application for a new medicine, and the marketing authorization for this medicine, a long period of time may occur. This reduces de facto the effective protection conferred by the patent. The European legislator has thus foreseen a mechanism to extend the protection period, called the supplementary protection certificate (hereinafter, ‘SPC’).
This SPC is only valid for the product referred to by the patent, namely the active ingredient or the combination of active ingredients of a medicine, provided that the medicine is covered by a marketing authorization (hereinafter, MA). Indeed, this extension of the protection cannot be extended to non-patented components, and must be limited to medicines (because it is the time needed to deliver a MA that justifies the extension). The European legislator considered that the holder of both a patent and a certificate should be able to enjoy an overall maximum of 15 years of exclusivity from the time the medicinal product in question first obtains authorization to be put on the market in the Community (Regulation 469/2009 concerning SPC, recital 9).
In practice, this raises sensitive issues of interpretation of regulation 469/2009, which feed an substantial caseload before the Court of Justice of the European Union which is charged with interpreting those texts.
In this context, the CJEU rendered on 12 December 2013 two judgments regarding the issuing of several SPC’s grounded on a single patent and one judgment regarding the concept of “product”.
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