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New IP License Guidelines are Announced

掲載紙: Winds from Japan No.32

掲載日: 2007年10月

On September 28, 2007, the Japanese Fair Trade Commission (JFTC) announced the introduction of new intellectual property license guidelines, which is effective instantaneously. The new IP guidelines, replacing the former guidelines which were limited to patent and know-how licensing arrangements, are applicable to a wider scope of licensing practice involving technology-related intellectual property rights. The IP guidelines deal with various conducts which could be questioned under the anti-monopoly law, including those arising in connection with so-called "hold-up" patents and standardization. The 23-page long guidelines comprise 4 sections: 1) Introduction; 2) Basic Policy; 3) Private Monopoly & Undue Trade Restrictions; 4) Unfair Trading Methods.

Details of the Guideline Components

The Japanese anti-monopoly law statutorily prohibits 3 types of business activity: private monopoly (§3); undue transactional restrictions (§3); and unfair trading methods (§19). The IP guidelines specifically discuss whether certain types of business activity should be considered questionable in view of the anti-monopoly law. A majority of these types of activity has arisen only recently, and such activities tend to arise as a result of patent pool licensing and standardization process.
The IP guidelines discuss in Section 2 ("Basic Policy") types of transaction to be carried out in the technology market from a perspective of the anti-monopoly law. In determining whether a particular type of transaction in the technology market is legal under the anti-monopoly law, a key factor is whether the transaction in question is likely to prevent or to impede competition in the market.
At the same time, emphasized is a need to define what actually constitutes a technology market, a product market, and other markets in order to determine whether a particular transaction carried out in such a market impedes or prevents competition within that market as it stands. Accordingly, it states that a key element is a presence or absence of a substitutive technology or product in that market as it stands.
In Section 2, two types of transactional restrictions are discussed as examples which would have an anti-competition impact. First type is a restriction of technology among "competitors." This type of restriction would be considered to have a larger negative influence against competition than that among non-competitors. The other is a restriction to use "indispensable" technologies. Technologies adopted as standard or norm in the technology market or product market would be regarded as being indispensable.
Section 2 also discusses determination of "non-impeding" conducts, using the concept of a newly introduced "safe harbor bench-mark." If a product share is 20% or less in the technology market, it would be assumed that its anti-competition effect would be negligible, or at most, limited.
Section 3 discusses potentially illegal actions in view of the private monopoly and undue transactional restriction test. The IP guidelines list several examples of business practice which could potentially be deemed illegal. For example, if an IP proprietor prevents its technology from being licensed to others through patent pool arrangements, such prevention would be questioned a violation of the law. Another example relates to unreasonable limitation of IP licenses; while yet another example relates to a field of use limitation in a multiple license arrangement in which several licensees license a technology which is essentially the same. A violation of the law would be questioned when certain restriction is enforced in connection with patent pool arrangements and/or multiple license arrangements.
Section 4 discusses what practice would constitute unfair trading methods under the law. There are three examples. A first one is discriminatory licensing. The risk of statutory violation would increase when and if discriminatory licensing is enforced by an IP proprietor who has actively sought a standardization of his/her IPR. A second type is a field of use limitation combined with other terms and conditions such as territorial restrictions and limitations on sublicensing. A third type is imposition of unreasonable terms and conditions including restrictions on materials, resale price, non-competition, research and development, grant-back, package licensing, etc.

Major changes in the New Guideline

Among other things, the following acts would be questionable under the new IP guidelines: restrictions on research and development, grant-back requirement for exclusive license, and post-expiration limitation.
Obliging a licensee to use a particular trademark was illegal under the former guideline. Obliging not to contest patent was the same. However, they are no longer on the black list in the new guidelines; and those items whose legality would be questionable are specifically discussed in the guidelines.
At least, the following items would be problematic: acts to prevent others from using a technology; acts to coerce a license on a basis of a platform technology; and discriminatory sub-licensing.

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