Grant-Backs and No Challenge Clauses in Europe: What Lessons after the Medimmune v. Genentech Case?

Abstract

This article will discuss the provisions of Article 5 of the new Technology Transfer Block Exemption Regulation ("TTBER'') in Europe and analyse whether the provisions in the Article are anti competitive. Article 5 of the TTBER concerns grant-backs and no challenge clauses. The article will examine the MedImmune v. Genentech case of the US Supreme Court to find out whether there is any likely impact for no challenge clauses in Europe. The case concerned a patent validity dispute in which a Pharmaceutical company, MedImmune, Inc., manufactured a drug Synagis, which Genentech, another pharmaceutical company, alleged to have violated its "Cabilly II'' patent. The case was brought before the US Supreme Court, which held on 9 January 2007 that a patent licensee is not required to terminate or be in breach of its licence agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed. The article first discusses the interaction of competition and intellectual property law in Europe followed by an examination of the TTBER grant-backs and no challenge provisions in Article 5. In the final part, a brief discussion on patent licensing and the doctrine of licensee estoppel is discussed to unravel any likely impact of MedImmune on no challenge clauses in licensing contracts in Europe.

Keywords: TTBER, Grant-backs, No challenge, Patent Licence, Antitrust