The  new  regulation  of  the  European  Commission  on  the  technology  transfer agreements

On March 21, 2014, the European Commission adopted a new Regulation on the assessment of the  technology transfer agreements whereby a licensor allows a licensee to operate patents, know-how  and/or software for the manufacturing of goods and for the provision of services (the “New  Regulation”). The New Regulation will enter into force on May 1, 2014 and will replace EC  Regulation no. 772/2004 which currently regulates the technology transfer agreements (the  “Regulation”).

Since licensing may also occur in the light of other types of agreements, in the content of the New  Regulation, it is expressly stated that it does not apply to licenses  granted based on the  research and development agreements regulated under EC Regulation no. 1217/2010 or those granted  based on the specialization agreements regulated by EC Regulation no. 1218/2010.

The New Regulation indicates the understandings within a technology transfer agreement, especially  those regarding the acquisition of raw materials or equipment for a licensor or the use of  trademarks pertaining to a licensor, which benefit, together with the technology transfer agreement  itself, from exception from the application of Article 101 (1) of the Treaty on the Functioning of  the European Union, when they are in direct relation with the production or sale of contractual  goods produced by using the licensed technology.

As opposed to the former regulation, the New Regulation prohibits all restrictions in relation to  passive sales between licensees. This amendment is consistent with the provisions of EC Regulation  no. 330/2010 on the categories of vertical agreements and concerted practices.

All exclusive retrocession clauses (situations where the licensee must license back to the  licensor, on an exclusive basis, being unable to use its own improvements and licensed technology  for itself) are excluded from the area of protection established until now by the Regulation, the  New Regulation establishing that all exclusive retrocession clauses do not benefit from exception.  However, the non-exclusive retrocession clauses are still subject to exception according to the New  Regulation.

The guidelines for the application of the New Regulation were also updated so that they reflect the  amendments of the New Regulation, a series of clarification being introduced in relation to dispute  settlement agreements and technology regrouping agreements.