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.