licensing case study

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    []Antitrust Guidelines for the Licensing of Intellectual Propert


    [日期:2005-06-29] 来源: 作者: [字体: ]

    Antitrust Guidelines

    for the Licensing of Intellectual Property

    Issued by the

    (1)U.S. Department of Justice

    and the

    Federal Trade Commission

    April 6, 1995


    1. Intellectual property protection and the antitrust laws

2. General principles

     2.1 Standard antitrust analysis applies to intellectual property

     2.2 Intellectual property and market power

     2.3 Procompetitive benefits of licensing

    3. Antitrust concerns and modes of analysis

     3.1 Nature of the concerns

     3.2 Markets affected by licensing arrangements

     3.2.1 Goods markets

     3.2.2 Technology markets

     3.2.3 Reseach and development: Innovation markets

     3.3 Horizontal and vertical relationships

     3.4 Framework for evaluating licensing restraints

4. General principles concerning the Agencies' evaluation of licensi

    ng arrangements

     4.1 Analysis of anticompetitive effects

     4.1.1 Market structure, coordination, and foreclosure

     4.1.2 Licensing arrangements involving exclusivity

     4.2 Efficiencies and justifications

     4.3 Antitrust "safety zone"

5. Application of general principles

     5.1 Horizontal restraints

     5.2 Resale price maintenance

     5.3 Tying arrangements

     5.4 Exclusive dealing

     5.5 Cross-licensing and pooling arrangements

     5.6 Grantbacks

     5.7 Acquisition of intellectual property rights

    6. Enforcement of invalid intellectual property rights

1. Intellectual property protection and the antitrust laws

1.0 These Guidelines state the antitrust enforcement policy of the

    U.S. Department of Justice and the Federal Trade Commission (indivi

    dually, "the Agency," and collectively, "the Agencies") with respect to

     the licensing of intellectual property protected by patent, copyright, a

    (2)nd trade secret law, and of know-how. By stating their general polic

    y, the Agencies hope to assist those who need to predict whether the

     Agencies will challenge a practice as anticompetitive. However, these

     Guidelines cannot remove judgment and discretion in antitrust law en

    forcement. Moreover, the standards set forth in these Guidelines must

    be applied in unforeseeable circumstances. Each case will be evaluated

     in light of its own facts, and these Guidelines will be applied reason

    (3)ably and flexibly.

     In the United States, patents confer rights to exclude others from

    making, using, or selling in the United States the invention claimed b

    (4)y the patent for a period of seventeen years from the date of issue.

     To gain patent protection, an invention (which may be a product, pr

    ocess, machine, or composition of matter) must be novel, nonobvious,

     and useful. Copyright protection applies to original works of authorsh

    (5)ip embodied in a tangible medium of expression. A copyright protec

    (6)ts only the expression, not the underlying ideas. Unlike a patent, wh

    ich protects an invention not only from copying but also from indepe

    ndent creation, a copyright does not preclude others from independentl

    y creating similar expression. Trade secret protection applies to inform

    ation whose economic value depends on its not being generally know

    (7)n. Trade secret protection is conditioned upon efforts to maintain se

    crecy and has no fixed term. As with copyright protection, trade secre

    t protection does not preclude independent creation by others.

     The intellectual property laws and the antitrust laws share the co

    mmon purpose of promoting innovation and enhancing consumer welfa

    (8)re. The intellectual property laws provide incentives for innovation a

    nd its dissemination and commercialization by establishing enforceable

     property rights for the creators of new and useful products, more effi

    cient processes, and original works of expression. In the absence of in

    tellectual property rights, imitators could more rapidly exploit the effor

    ts of innovators and investors without compensation. Rapid imitation

    would reduce the commercial value of innovation and erode incentives

     to invest, ultimately to the detriment of consumers. The antitrust law

    s promote innovation and consumer welfare by prohibiting certain acti

    ons that may harm competition with respect to either existing or new

     ways of serving consumers.

    2. General principles 2.0 These Guidelines embody three general principles:

    a. for the purpose of antitrust analysis, the Agencies

     regard intellectual property as being essentially c

    omparable to any other form of property;

    b. the Agencies do not presume that intellectual pro

    perty creates market power in the antitrust contex

    t; and

    c. the Agencies recognize that intellectual property l

    icensing allows firms to combine complementary

    factors of production and is generally procompetit


2.1 Standard antitrust analysis applies to intellectual prop


     The Agencies apply the same general antitrust principles to condu

    ct involving intellectual property that they apply to conduct involving

    any other form of tangible or intangible property. That is not to say t

    hat intellectual property is in all respects the same as any other form

     of property. Intellectual property has important characteristics, such as

     ease of misappropriation, that distinguish it from many other forms o

    f property. These characteristics can be taken into account by standard

     antitrust analysis, however, and do not require the application of fun

    damentally different principles.(9)

     Although there are clear and important differences in the purpose,

     extent, and duration of protection provided under the intellectual prop

    erty regimes of patent, copyright, and trade secret, the governing antitr

    ust principles are the same. Antitrust analysis takes differences among

     these forms of intellectual property into account in evaluating the spe

    cific market circumstances in which transactions occur, just as it does

     with other particular market circumstances.

     Intellectual property law bestows on the owners of intellectual pro

    perty certain rights to exclude others. These rights help the owners to

     profit from the use of their property. An intellectual property owner's

     rights to exclude are similar to the rights enjoyed by owners of othe

    r forms of private property. As with other forms of private property,

certain types of conduct with respect to intellectual property may have

     anticompetitive effects against which the antitrust laws can and do pr

    otect. Intellectual property is thus neither particularly free from scrutin

    y under the antitrust laws, nor particularly suspect under them.

     The Agencies recognize that the licensing of intellectual property i

    s often international. The principles of antitrust analysis described in t

    hese Guidelines apply equally to domestic and international licensing a

    rrangements. However, as described in the 1995 Department of Justice

     and Federal Trade Commission Antitrust Enforcement Guidelines for

    International Operations, considerations particular to international operat

    ions, such as jurisdiction and comity, may affect enforcement decision

    s when the arrangement is in an international context.

    2.2 Intellectual property and market power

     Market power is the ability profitably to maintain prices above, or

     output below, competitive levels for a significant period of time.(10)

    The Agencies will not presume that a patent, copyright, or trade secre

    t necessarily confers market power upon its owner. Although the intell

    ectual property right confers the power to exclude with respect to the

     specific product, process, or work in question, there will often be suf

    ficient actual or potential close substitutes for such product, process, o

    (11)r work to prevent the exercise of market power. If a patent or other form of intellectual property does confer market power, that market

    power does not by itself offend the antitrust laws. As with any other

    tangible or intangible asset that enables its owner to obtain significant

     supracompetitive profits, market power (or even a monopoly) that is

    solely "a consequence of a superior product, business acumen, or histo

    (12)ric accident" does not violate the antitrust laws. Nor does such mar

    ket power impose on the intellectual property owner an obligation to license the use of that property to others. As in other antitrust contexts, however, market power could be illegally acquired or maintained, or, even if lawfully acquired and maintained, would be relevant to the ability of an intellectual property owner to harm competition through unreasonable conduct in connection with such property.

2.3 Procompetitive benefits of licensing

     Intellectual property typically is one component among many in a

     production process and derives value from its combination with complementary factors. Complementary factors of production include manufacturing and distribution facilities, workforces, and other items of intellectual property. The owner of intellectual property has to arrange for its combination with other necessary factors to realize its commercial value. Often, the owner finds it most efficient to contract with others for these factors, to sell rights to the intellectual property, or to enter

     into a joint venture arrangement for its development, rather than supplying these complementary factors itself.

     Licensing, cross-licensing, or otherwise transferring intellectual property (hereinafter "licensing") can facilitate integration of the licensed property with complementary factors of production. This integration can lead to more efficient exploitation of the intellectual property, benefiting consumers through the reduction of costs and the introduction of new products. Such arrangements increase the value of intellectual property to consumers and to the developers of the technology. By potentially increasing the expected returns from intellectual property, licensi

ng also can increase the incentive for its creation and thus promote g

    reater investment in research and development.

     Sometimes the use of one item of intellectual property requires ac

    cess to another. An item of intellectual property "blocks" another whe

    n the second cannot be practiced without using the first. For example,

     an improvement on a patented machine can be blocked by the patent

     on the machine. Licensing may promote the coordinated development

     of technologies that are in a blocking relationship.

     Field-of-use, territorial, and other limitations on intellectual propert

    y licenses may serve procompetitive ends by allowing the licensor to

    exploit its property as efficiently and effectively as possible. These va

    rious forms of exclusivity can be used to give a licensee an incentive

     to invest in the commercialization and distribution of products embod

    ying the licensed intellectual property and to develop additional applic

    ations for the licensed property. The restrictions may do so, for exam

    ple, by protecting the licensee against free-riding on the licensee's inv

    estments by other licensees or by the licensor. They may also increas

    e the licensor's incentive to license, for example, by protecting the lic

    ensor from competition in the licensor's own technology in a market

    niche that it prefers to keep to itself. These benefits of licensing restri

    ctions apply to patent, copyright, and trade secret licenses, and to kno

    w-how agreements.




     ComputerCo develops a new, copyrighted software program fo

    r inventory management. The program has wide application in the health field. ComputerCo licenses the program in an arrangement that imposes both field of use and territorial limitations. Some

     of ComputerCo's licenses permit use only in hospitals; others permit use only in group medical practices. ComputerCo charges different royalties for the different uses. All of ComputerCo's licenses permit use only in specified portions of the United States and in specified foreign countries.(14) The licenses contain no provision

    s that would prevent or discourage licensees from developing, using, or selling any other program, or from competing in any other good or service other than in the use of the licensed program.

     None of the licensees are actual or likely potential competitors of ComputerCo in the sale of inventory management programs. Discussion:

     The key competitive issue raised by the licensing arrangement is whether it harms competition among entities that would have

     been actual or likely potential competitors in the absence of the

     arrangement. Such harm could occur if, for example, the licenses anticompetitively foreclose access to competing technologies (in

     this case, most likely competing computer programs), prevent licensees from developing their own competing technologies (again,

     in this case, most likely computer programs), or facilitate market

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