Anti-competitive Use of IPRs

As mentioned in Chap. 4 (Sect. 4.3.2.3), IPRs created by employees are usually owned by the employer. The interviewees explained that employees report their inventions. They are then reviewed to determine how far the university is free to exploit (i.e. potential rights of other parties are scrutinised) and the potential for exploitation is evaluated. If applicable, rights are registered which are often managed by a university holding. The universities do not exploit IPRs themselves, but look for partners for exploitation or found spin-offs. If a spin-off is created the holding company might hold equity in it or assist with other IPR related activities. The preference would be towards conferring licenses rather than the assignment of IPRs. As has been mentioned above (Sect. 5.4.3), royalties and milestone payments at market rates are received for licenses. Next to compensation, another important factor for universities is the limitation of restrictions regarding future research based on the IPR. In particular, if Ph.D. researchers are involved in the creation of the IPRs, they are eventually required to publish their theses. Additionally, as universities aim at making knowledge publicly accessible (be it through a product created by a company), the agreements would contain an antishelving clause. If no partner willing to exploit the IPR could be found, the application would, according to a legal officer, usually be dropped after 30 months. He mentioned that there used to be patent targets in some Dutch universities which had led to unexploited patents, but such policies have been abandoned.

As it is sometimes difficult to find partners for exploitation (for example the invention might still be at too early a stage to be attractive to private sector partners (knowledge gap)), another interviewee explained that his university would sometimes lend money from a fund established for this purpose to companies in order to jointly bring the invention to a prototype stage which can then be further developed. At that stage, except for receiving royalties from the license, the university would leave the collaboration. The company would also need to invest during the common phase and sometimes additional public funding is available.

The interviewees explained that, in PPPs, the agreements would contain rules concerning sharing IPRs and future income. According to an interviewee working on business collaborations, the rule ‘ownership follows inventorship’ would apply in his university. Thereby, jointly made inventions would be jointly owned, those made by the company are owned by the company and if university staff made the invention, it is owned by the university. Another interviewee mentioned that his university would try to negotiate that the IPRs would generally belong to the university as far as possible. If the university has the rights, the procedure as outlined above is followed. Companies might additionally want a first option clause, so ‘they can be sure that if they want they can get access to the technology’, but reasonable commercial rates would still need to be paid.

From a competition law perspective, the rules seem generally unproblematic. If anything, demanding anti-shelving clauses might be regarded as anti-competitive if imposed on undertakings in a way that is not reasonable commercial practise, but there may be room for exemptions. A legal officer explicitly mentioned the potential of IPR assignment or licensing agreements to constitute state aid. Interestingly, he mentioned that companies would be equally aware of this, but would nevertheless try to negotiate advantages, as they would assume that the amount would usually be below the de minimis threshold and that interstate trade would, in most cases, be unaffected. Even if that was the case, the university would, however, nevertheless not agree to anti-competitive arrangements because Dutch competition rules would still apply.[1] The subsidies/loans provided through public funding or through the university, mentioned by one interviewee, might, however, qualify as state aid if they cannot pass the private investor principle or could be exempted.

  • [1] However, as we have seen in Chap. 3 Sect. 3.3.5.3 above with regards to the case T-488/11Sarc (Judgment of 12 June 2014, EU:T:2014:497), some Dutch universities seem rather generoustowards their own spin-offs which one may assume to be anti-competitive even if the GeneralCourt here dismissed the case due to limited standing of the competitor who had brought the casebefore the General Court.
 
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