Patent Challenge Clauses: A New Antitrust Offense?

56 Pages Posted: 13 Dec 2016 Last revised: 24 May 2023

See all articles by Michal Gal

Michal Gal

University of Haifa - Faculty of Law

Alan D. Miller

Faculty of Law, Western University

Date Written: May 15, 2017


Patent licensing contracts commonly prohibit licensees from challenging the validity of the patents at the basis of the contract or penalize such challenges. A considerable debate has emerged as to whether courts should enforce these challenge clauses. We argue that this debate has not gone far enough. Challenge clauses should be illegal under antitrust law. Our argument is based on two grounds. The first, doctrinal route, argues that this new antitrust offense is a natural extension of the logic of the Supreme Court’s landmark case of Federal Trade Commission v. Actavis, decided three years ago. The second, normative route, shows that a normative foundation exists for recognizing this antitrust offense. We propose three cumulative conditions that should exist for a new antitrust offense to be realized, and show that they are met in the case of challenge clauses. Our conclusion challenges the existing laws and draws a new line between contract law and antitrust law, which is applicable to other cases as well.

Keywords: Patents, Challenge Clauses, Antitrust, Actavis, Patent Validity, Licensing

JEL Classification: K11, K21, O30, K00, K23, L1, L13, L14, L4, L40, L41, D40

Suggested Citation

Gal, Michal and Miller, Alan D., Patent Challenge Clauses: A New Antitrust Offense? (May 15, 2017). 102 Iowa L. Rev. 1477 (2017), Available at SSRN:

Michal Gal (Contact Author)

University of Haifa - Faculty of Law ( email )

Mount Carmel
Haifa, 31905


Alan D. Miller

Faculty of Law, Western University ( email )

1151 Richmond Street
London, Ontario N6A3K7


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