Advocate General Wathelet has delivered a significant Opinion on the relationship between Article 101(1) and patent licences. This arose from a disputed arbitration award between Genentech and Sanofi-Aventis, and followed a reference to the Court of Justice of the European Union (CJEU), from the Paris Court of Appeal.

The AG noted that Article 101(1) is not there to protect the efficacy of commercial arrangements, and will be engaged only where an agreement between undertakings has the object or effect of restricting or preventing competition and affects trade between member states.

What was the case about?

The original arbitration concerned a dispute over unpaid royalty payments under a patent licence where one of the underlying patents had been revoked. The arbitrator found that the licensee should continue to pay royalties, notwithstanding the revocation of the patent. This was on basis that the licensee had entered into the licence to enable it to use the relevant technology without the risk of litigation. The licensee contested the award. The French Court of Appeal referred various questions to the CJEU including whether paying royalties for a revoked patent had put the company at a competitive disadvantage to competitors who had not been required to pay for the technology and therefore infringed Article 101(1).

What about Article 101 and Patent royalties?

Wathelet commended the reasoning in Ottung (1989 CJEU) that an obligation to pay royalties in a licensing agreement after patent expiry “may infringe Article 101(1) TFEU where the licence agreement either does not grant the licensee the right to terminate the agreement by giving reasonable notice, or seeks to restrict the licensee’s freedom of action after termination.”

Applying that approach, Wathelet considered that there was no infringement of Article 101(1) here, as Genentech was freely able to terminate the agreement with a “very short” notice period of two months, and its “freedom of action was not restricted in any way during the period after termination, and it was not subject to any clause preventing it from challenging the validity or infringement of the patents at issue”. He also observed that the licence contained no restrictions on the licensee’s ability to set prices or conduct research.

The AG therefore held that Article 101(1) was not engaged and that Genentech should pay Hoechst EUR 110 million in back royalties even though a licensed patent had been revoked. In the circumstances: “the mere use of the technology at issue during the term of the licence agreement was sufficient to trigger the obligation to pay”.

The position taken by the Advocate-General reflects the views set out in the Technology Transfer Guidelines (paragraph 184) which regards royalty arrangements in technology licences as generally outside the scope of Article 101 and falling into the realm of commercial negotiation.

Arbitration disputes and Article 101?

The AG also confirmed that competition issues arising in the context of arbitrations can always be referred by national courts to the CJEU.

He gave short shrift to arguments that dealing with Article 101(1) issues through the preliminary ruling process would infringe French law. It had been argued that French law prevented international arbitration awards being subject to judicial review, save in circumstances where there has been a flagrant infringement of international public policy.

The AG considered that the CJEU was bound to give a preliminary ruling upon request by a national court, unless the request related to a fictitious dispute, or was on general or hypothetical questions, where the questions to the CJEU bore no relation to the facts.

So where does the case leave patentees?

This case is important for many patent owners and licensees, as it clarifies that Article 101(1) is not a bar to enforcing a licensing agreement and receiving royalties even when a licensed patent has been declared invalid (or, by implication, expired).

This is in direct contrast to the US Supreme Court’s decision in Kimble v Marvel of June 2015, which confirmed that a patent holder cannot charge royalties for the use of his invention in the US after its patent term has expired.

It will be interesting to see the CJEU’s final decision, as AG opinions are only persuasive (but in practice usually followed).