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Law Generally

Sherman Act

Clayton Act

Robinson-Patman Antidiscrimination Act

Types of IP with Antitrust concern

More Likely:

  • Patent

Less Likely

  • Trademark
  • Copyright
  • Trade Secrets

Concepts of Antitrust Analysis

  • Market
  • Market Power
  • Per Se vs Rule of Reason
  • Vertical vs. Horizontal

Price Fixing

Per Se Illegal



  1. Two products
  2. Sale conditional
  3. Economic power
  4. Effect on commerce


Refusals to License

Essential Facilities and the Duty to License

Intergraph v. Intel, 195 F.3d 1346 (Fed. Cir. 1999) (rejection of essential facilities doctrine)

Resale Price Maintenance

Definition of Resale Price Maintenance

Recent Case Law


  • Consignment vs. Dealer; United States v. General Electric, 272 U.S. 476 (1926) (fixing resale price not per se violation under true consignment sales)
  • Minimum royalties

Other Behavior (Monopolizing)

Microsoft Examples

Original "Nine No No's:" in licensing

  1. tying the purchase of unpatented materials as a condition of the license,
  2. requiring the licensee to assign back subsequent patents,
  3. restricting the right of the purchaser of the product in the resale of the product,
  4. restricting the licensee's ability to deal in products outside the scope of the patent,
  5. a licensor's agreement not to grant further licenses,
  6. mandatory package licenses,
  7. royalty provisions not reasonably related to the licensee's sales,
  8. restrictions on a licensee's use of a product made by a patented process, and<
  9. minimum resale price provisions for the licensed products.

Subsequent Evolution - see Address by R. Hewitt Pate, Acting Assistant Attorney General, Antitrust Division, U.S. Department of Justice before the American Intellectual Property Law Association, January 24, 2003:

  1. Mandatory package licensing: Also known as patent pools, we now recognize that they may provide competitive benefits by integrating complementary technologies, reducing transaction costs, clearing blocking positions, and avoiding costly infringement litigation. At the same time, we recognize that some patent pools can restrict competition, whether among intellectual property rights within the pool, downstream products incorporating the pooled patents, or in innovation among parties to the pool.
  2. Tying of unpatented supplies: This sort of tying could minimize the risks associated with the uncertainty that a patent owner may have regarding the value of his/her patented technology. And without a showing that the patent actually conveys market power, antitrust concerns do not arise.
  3. Compulsory payment of royalties in amounts not reasonably related to sales of the patented product: It might be far more efficient, for example, to base royalties upon the total units produced by the licensee. Again, any antitrust concern depends upon the presence of market power.
  4. Mandatory Grantbacks: The IP Guidelines recognize that grantbacks can have procompetitive effects, and will be evaluated under the rule of reason. On the other hand, grantbacks may adversely affect competition if they substantially reduce the licensee's incentives to engage in research and development and thereby limit rivalry in innovation markets. Again, an important factor in the agencies' analysis of a grantback will be whether the licensor has market power in a relevant market. A non-exclusive grantback is less likely to produce anticompetitive effects because the licensee remains free to license its improvements to others.
  5. Licensee veto power over the licensor's grant of further licenses: Absent any showing of market power or foreclosure, such a restriction may have a net procompetitive effect.
  6. Restrictions on sales of unpatented products made by a patented process: Such a restriction is unlikely to raise concerns to the extent that the licensee and licensor would not be actual or potential competitors absent the licensing relationship, or that the licensor does not have market power.(12)
  7. Vertical Restraints: Post-sale restrictions on resale by purchasers of patented products; Specifying price licensee could charge upon resale of licensed products; Tie-outs (Tie-outs are restrictions on a licensee's ability to sell products that compete with the patented product): With respect to tie-outs, at least, anticompetitive concerns are unlikely to arise unless the patentee has "market power in the relevant market for the patent or patented product" under the patent misuse statute.(13)

See also 1995 Justice Department Antitrust Guidelines for the Licensing of Intellectual Property

Rules in Europe are Different

See for example COMMISSION REGULATION (EU) No 330/2010 of 20 April 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practice.

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