European Union: EU Antitrust Law: European Commission Adopts Revised Regime For Licenses And Other Technology Transfer Agreements

Last Updated: 1 August 2014
Article by Tobias Wuttke

I. A new set of rules

EU antitrust law plays a key role in the field of intellectual property licensing agreements which have an impact on the EU territory. This is oftentimes ignored by the parties to these agreements, in particular if they are non- European companies. For two reasons such ignorance is risky: in the first place, EU antitrust law is compulsory law which cannot be circumvented by choice of law provisions. In addition, every violation of EU antitrust law can have severe consequences, i.e. invalidity of the agreement in part or in total, administrative fines (up to 10% of the yearly turnover) and potential damage claims of third parties who are affected by the antitrust violation.

On March 28, 2014, the European Commission adopted a revised set of rules for the assessment of license agreements under EU antitrust law. This revised set of rules replaces and sharpens the current set of rules, namely EU Regulation 772/2004 and the corresponding Guidelines 2004C101/2.

The revised set of rules consists of

  • Commission Regulation (EU) No 316/2014 on the application of Article 101 (3) of the Treaty of the Functioning of the European Union to categories of technology transfer agreements ('TT-BER'); and
  • Commission Guidelines (2014/ C89/03) on the application of Article 101 (3) of the Treaty of the Functioning of the European Union to of Technology Transfer Agreements ('Guidelines').

The effective date of these new rules is 1 May 2014. It is noteworthy that the new rules not only apply to license agreements entered into from 1 May 2014 onwards, but – as of 1 May 2015 – also to agreements entered into under the regime of the current rules. In other words, the parties to existing license agreements have one year to ensure that their agreements are in conformity with the new rules. As well be detailed below, there is some homework to be done.

II. The legal context

The starting point for the legal analysis of a license agreement under EU antitrust law is Article 101 of the Treaty on the Functioning of the European Union ('TFEU').

Article 101 (1) TFEU prohibits agreements which may affect trade between EU Member States and which have as their object or effect the prevention, restriction or distortion of competition within the EU market. Therefore, it is for instance prohibited if two competitors in a license agreement divide markets between them instead of competing with each other. Another example would be a license agreement that forces a licensee to pay royalties for EU countries in which no intellectual property rights of the licensor exist.

Article 101 (3) TFEU provides for an exemption to this prohibition under Article 101 (1) TFEU if four exemption requirements are met. In practice, these four exemption requirements set a high hurdle and produce legal insecurity. The importance of the TTBER lies in the fact that it creates a 'safe harbor' for license agreements if these agreements respect the conditions provided in the TT-BER. In this case it is assumed that these agreements are in conformity with Article 101 (3) TFEU. Thus, every license agreement should make sure that it is covered by the 'safe harbor' of the TT-BER. Otherwise, at least the validity of the license could be at stake.

III. What changes?

The new regime contains in particular the following important changes to the TT-BER and to the Guidelines:

1. Important changes to the TTBER

a) Non-challenge clauses

Many license agreements contain clauses that obligate the licensee not to challenge the validity of the licensed intellectual property rights during the lifetime of the license agreement. Under the new regime, in non-exclusive license agreements these clauses are now considered as an 'excluded restriction' pursuant to Article 5 TTBER. Consequently, these clauses are no longer automatically exempted from Article 101 (1) TFEU. Now, it must be analyzed on a case-by-case basis if these clauses fall under Article 101 (1) TFEU and if so, whether they meet the high hurdles set by the four exemption requirements of Article 101 (3) TFEU.

b) Grant back obligations

In addition, the new regime takes a more prudent approach on clauses that force a licensee to exclusively license or assign to the licensor any improvements or new applications conceived by the licensee with respect to the licensed technology. Under the new regime, these clauses are now also considered as an 'excluded restriction' pursuant to Article 5 TT-BER (with the consequences described above for nonchallenge clauses in non-exclusive license agreements).

2. Important changes to the Guidelines

a) Settlements

In the Guidelines it is now explicitly stated that licensing in the context of settlement agreements is treated in the same way as other license agreements (cf. margin no. 237). Of course, the Guidelines are theoretically without prejudice to the interpretation of Article 101 TFEU and the TT-BER that may be given by the EU courts and the national courts. Nevertheless, in practice, it is most unlikely that these courts would disregard the Guidelines.

b) Technology Pools

In addition, the Guidelines give new guidance on "technology pools", i.e. arrangements in which two and more companies assemble a package of technology which is subsequently licensed to the members of the pool and third parties. The Guidelines acknowledge the often pro-competitive nature of patent pools (in particular in the telecom sector) and offer now a 'safe harbor' for these pools under the conditions set forth in margin no. 244 et seq. of the Guidelines.

IV. Practical impact

The new regime has a real practical impact, since most license agreements contain non-challenge clauses and/or grant-back obligations. It is definitely recommendable to avoid for new licenses any non-challenge clauses or grant-back obligations which conflict with the new regime. Otherwise, the validity of these licenses would be prejudiced. Given the fact that, as of 1 May 2015, the new regime will also apply to license agreements existing today, it is furthermore advisable to make sure between the contracting parties in the upcoming months that any conflicting obligations are removed from the existing agreements. In a nutshell, every license with an impact on the territory of the EU should make sure that it is covered by the 'safe harbor' of the TT-BER.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions