market.[1] In addition, the Agencies will consider the extent to which grantback provisions in the relevant markets generally increase licensors’ incentives to innovate in the first place.
5.7 Acquisition of Intellectual Property Rights
Certain transfers of intellectual property rights are most appropriately analyzed by applying the principles and standards used to analyze mergers, particularly those in the 2010 Horizontal Merger Guidelines. The Agencies will apply a merger analysis to an outright sale by an intellectual property owner of all of its rights to that intellectual property and to a transaction in which a person obtains through grant, sale, or other transfer an exclusive license for intellectual property (i.e., a license that precludes all other persons, including the licensor, from using the licensed intellectual property).[2] Such transactions may be assessed under section 7 of the Clayton Act, sections 1 and 2 of the Sherman Act, and section 5 of the Federal Trade Commission Act.[3]
Example 10
Situation: Omega develops a new, patented pharmaceutical for the treatment of a particular disease. The only drug on the market approved for the treatment of this disease is sold by Delta. Omega’s patented drug has almost completed regulatory approval by the Food and Drug Administration. Omega has invested considerable sums in product development and market testing, and initial results show that Omega’s drug would be a significant competitor to Delta’s. However, rather than enter the market as a direct competitor of Delta, Omega licenses to Delta the right to manufacture and sell Omega’s patented drug. The license agreement with Delta is nominally nonexclusive. However, Omega has rejected all requests by other firms to obtain a license to manufacture and sell Omega’s patented drug, despite offers by those firms of terms that are reasonable in relation to those in Delta’s license.
Discussion: Although Omega’s license to Delta is nominally nonexclusive, the circumstances indicate that it is exclusive in fact because Omega has rejected all reasonable offers by other
- ↑ See section 4.2.
- ↑ The Agencies may also apply a merger analysis to a transaction involving a license that does not fall within the traditional definition of an exclusive license but in substance transfers intellectual property rights and raises the same potential antitrust concern—i.e., the transaction’s effect may be to substantially lessen competition in a relevant market. See, e.g., Example 10.
- ↑ The safety zone of section 4.3 does not apply to transfers of intellectual property such as those described in this section.
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