Editor's note: Genentech A technology licensing agreement was signed, Obtain a non-exclusive license to use a patented technology, It is used to produce a pharmaceutical product for marketing in the United States and the European Union. One European patent and two US patents have been filed for the technology, But all three patents were revoked during the term of the license agreement. Read on for more details!

[background] Genentech A technology licensing agreement was signed, Obtain a non-exclusive license to use a patented technology, It is used to produce a pharmaceutical product for marketing in the United States and the European Union. One European patent and two US patents have been filed for the technology, But all three patents were revoked during the term of the license agreement. License agreement, In addition to a one-time licensing fee and a fixed annual research fee, Genentech Also payable "Installment commission (running royalty) " , The amount is equivalent to the net sales of the products manufactured using the licensed technology 0. 5%. During the term of the license agreement, Genentech The installment fee has not been paid. Therefore, The licensor of the license agreement initiates a series of arbitration proceedings pursuant to the terms of the license agreement. 2012 years 9 month 5 day, The sole arbitral tribunal shall issue the third part of the award, requirement Genentech Pay the royalty fee in installments for the duration of the license Agreement. 2012 years 12 month 10 day, Genentech to (France) The Paris Court of Appeal, Request that the arbitral award be void. The Paris Court of Appeal suspended the case, The Court of Justice of the European Union is requested to make a preliminary ruling on the following issues (preliminary ruling) : Under a technology licensing agreement, The licensee shall pay a royalty for the patented technology, But the patent was later revoked, In this case, Whether it can be referenced "European Union operation Treaty (Treaty on the Functioning of the European Union) " The first 101 Provision of article (The first 101 Article is related to "Anti-unfair competition" Clause of, Translator's note) , The license agreement is deemed invalid?

[discover] During the trial of this case, Genentech Put forward, According to the terms of the license agreement, It shall be paid as stated "Installment commission" The precondition is, If this license agreement is not signed, Its production, The use or sale of the product will infringe the patent rights covered by the license agreement. Therefore, The third part of the arbitration award in the case that it does not infringe the patent right concerned, They're still asking them to pay "Installment commission" , Wrongful judgment, A violation of fair competition laws. In view of this, The court of Justice of the European Union said that the Paris Court of Appeal's preconditions for submitting the question should also include "The absence of a violation of a licensed right" . Therefore, The Court of Justice of the European Union amended the question in this case requiring a preliminary determination to: Within the validity of the license agreement, occur "The patent protecting the licensed technology is revoked" or "The Licensee does not infringe the patent rights of the licensed technology" In the case of, Can you quote "The European Union operates the Convention" The first 101 article, Rescind the contractual obligations corresponding to the license Agreement? "Ottung" case (Case number: C-320/87) In the, The European Court of Justice has dealt with similar disputes and ruled on them, A license agreement may be terminated if it allows the Licensee to perform a duty of reasonable notice, So the agreement has to do with "During the validity of this Agreement, Payment of licensing fee" Is not part of "European Union operation Treaty" The first 101 The prohibited scope of the article. The European Court of Justice's reasoning is, Whether or not the actual licensor's industrial property rights can be used against the licensee, As long as the license agreement is valid, The licensee shall fulfill the obligation to pay the license fee. Based on the decision in the above case, The Court of Justice of the European Union held that since "Where the License Agreement allows the Licensee to terminate the Agreement after performing the duty of reasonable notice, Even if the validity of the industrial property is terminated during the term of the agreement, Nor does it affect the Licensee's payment obligation" , so, When the industrial property in question is still valid, Nor shall it affect the payment obligation of the licensee. Therefore, The License agreement may be terminated as long as it allows the Licensee to perform the duty of reasonable notice, whether Genentech In the course of arbitration "Non-patent infringement" reason, or "The patent was subsequently revoked" reason, Shall not affect the Licensee's obligation to pay the license fee during the term of the license Agreement. and, In this case, Require the licensee to fulfill the obligation to pay the license fee, Does not belong to the restriction of fair competition.

[comment] The Court of Justice of the European Union holds that the license agreement may be terminated after it allows the licensee to perform the notification obligation, The Licensee is required to perform and pay the license fee within the validity period of the said Agreement, It does not violate the principle of free competition. The parties agree to voluntarily sign the performance and termination terms of this agreement, And the content of the agreement does not distort competition or generate undue competition interests, Therefore, it is not an act of restricting competition. simultaneously, The Court of Justice of the European Union found that although "Revocation of patent" Is retroactive, It does not affect the validity of the agreement itself, That is to say, the validity of the agreement itself may exceed the validity of the industrial property on which the agreement was established.

compile: Li Fangqian, The Esaberi intern proofreading: Liu Dan, Esabarry Legal Counsel source: Esabaril (ELZABURU) Intellectual property rights