The Federal Trade Commission and Department of Justice
announced August 8, 2016, that they are seeking comments on the proposed
updated antitrust guidelines for licensing intellectual property. The
prior 1995 guidelines are being updated in light of changing law and additional
experience gained by the agencies, according to the press release.
Specifically, the press release states:
[T]he agencies have determined that some
revisions are in order because the IP Licensing Guidelines should accurately
reflect intervening changes in statutory and case law. For example, Congress
recently enacted the Defend Trade Secrets Act of 2016, creating for the first
time a federal cause of action for misappropriation of trade secrets. Also, the
change from a 17-year patent term (from the date of grant) to a 20-year patent
term (from the date of filing) effectuated by the Uruguay Round Agreements Act
of 1994 was on the verge of taking effect when the IP Licensing Guidelines were
issued in 1995. Similarly, copyright terms are longer now than when the IP
Licensing Guidelines were issued. The proposed updated IP Licensing Guidelines
account for these statutory developments.
Case law developments include the Supreme Court’s decision in
Illinois Tool Works, Inc. v. Independent Ink, Inc., in which the Court
subscribed to the agencies’ view in the IP Licensing Guidelines that a patent
does not necessarily confer market power on the patentee. Another important
development is the Court’s decision in Leegin Creative Leather Products,
Inc. v. PSKS, Inc., which held that resale price maintenance (RPM)
agreements should be evaluated under the rule of reason, overturning a nearly century-old
view of per se illegality. Although Leegin arose in the context of
resale price restrictions on goods sold by retailers, the agencies find that
its analysis applies equally to pricing restrictions in intellectual
property licensing agreements. The IP Licensing Guidelines therefore have been
amended to reflect rule-of-reason treatment of vertical price agreements.
The agencies are also updating the IP Licensing Guidelines’
discussion of general principles to reflect the research in the FTC’s 2011 Evolving
IP Marketplace report. The agencies also added language to reinforce
their longstanding view that “the antitrust laws generally do not impose
liability upon a firm for a unilateral refusal to assist its competitors, in
part because doing so may undermine incentives for investment and innovation.”
In addition, the agencies are updating the analysis of
markets affected by licensing arrangements to mirror the approach taken in the
2010 Horizontal Merger Guidelines. The IP Licensing Guidelines’ approach to
innovation markets has been revised to reflect the agencies’ actual experience
with this mode of analysis. The proposed update retains the concept of
“innovation markets,” but refers to them as “Research and Development Markets”
to more accurately reflect how these markets have been defined in enforcement
actions.
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Posted By Mike Mireles to
IP finance on 8/12/2016 10:43:00 pm