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Colleague Sophie van Loon Obtains Doctorate on Friction between IP- and Competition Law

Intellectual property rights ('IP rights'), such as copyrights and patents, are a valuable asset to undertakings, since they invest in the development of products in which such rights are vested, like software or medicines. The exclusive IP right protects these investments and the intellectual efforts on which they are based; others may be prohibited from using or applying the intellectual property. An undertaking may share its IP rights with third parties by means of licenses, but may also decide to keep these 'to itself'.

What happens if a product or application in which an IP right is vested becomes so successful that it becomes impossible for other undertakings that do not have this right to engage in competition? The court or competition authority may then intervene. It may order the IP rightholder to grant a compulsory license on the basis of (European) competition law, which prohibits the abuse of a dominant position. However, such interventions are controversial, because they prevent undertakings from using their own IP rights. A potential threat of this is that undertakings will be less inclined to invest in research and development, because of the risk that they will have to share their inventions with others.

In her dissertation 'Refusal to License as Abuse of a Dominant Position. Intellectual Property, Article 82 of the EC Treaty and the Obstruction of Innovation', Sophie van Loon deals with the question of when an undertaking abuses its dominant position if it refuses to grant an IP license to other undertakings. In this connection Sophie has made an extensive analysis of the case law of the European Court of Justice on this subject matter. In a number of high-profile cases, the European Court of Justice has expressed opinions on refusals of licenses and Article 82 of the EC Treaty (the prohibition on abuse of a dominant position): Volvo/Veng, Magill and IMS Health. The European Court of First Instance has also expressed an opinion on this issue: in 2007 it held that Microsoft had to share copyright-protected information on its operating system Windows with others.


 


In the analysis of this case law Sophie has identified several interesting issues.

First of all, there appears to be a controversy between the methods used in competition law to determine whether an undertaking occupies a dominant position on the one hand, and the starting points of the IP system on the other hand. In competition law, the question of whether there is a dominant position depends on the question of whether an undertaking can behave independently on the relevant market. This market is determined on the basis of consumers' preferences for certain products and the extent to which consumers regard these products as interchangeable. However, because it is precisely IP rights that make certain products not interchangeable (the rightholder may prohibit others from making the same products), in 'IP cases' the relevant market is often defined very narrowly. As a consequence, the undertaking with the IP right will more easily occupy a dominant position than other undertakings. Because the idea of the IP system is to reward investments in inventiveness and creativity, it seems contradictory to punish the same efforts by automatically ascribing a dominant position within the meaning of competition law to the IP rightholder.

A second finding is that Sophie thinks that the refusals to license should be assessed differently from refusals to supply.

It is sometimes argued in literature that the refusal of an IP license may be regarded as a 'refusal to supply intellectual property'. However, Sophie is of the view that IP rights have a special status, so that other criteria apply to the assessment of refusals to license. The decisive criterion to the question of whether there is abuse of a dominant position she found in her dissertation is the criterion of a 'new product'. According to this criterion, a refusal to license may only constitute an abuse if the IP system obstructs itself; i.e. when innovation is impeded because IP rights stop the introduction of a new product. Although the European Court of Justice also uses this 'new product' criterion in its case law on refusals to license, it is not fully clear yet what substance should be given to it. Sophie makes a number of suggestions for this in her dissertation, in hopes that the courts will apply the new product criterion more often in conflicts about refusals to license.

The main conclusion Sophie draws in her dissertation is that the courts should exercise the greatest restraint in conflicts about refusals to license, and should only order undertakings to share their IP rights with others in the event of a serious innovation impediment.

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Rogier Overbeek

Tel: +31 20 5506 640
E-mail: rogier.overbeek@kvdl.nl

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