Historically, there has been a recognition of the role of competition policy in balancing the exercise of intellectual property (IP) rights. Under the TRIPs framework, concerns regarding the potential for anti-competitive abuse of IP rights has been voiced by many member states, especially those in the developing world.
Consequently, TRIPs provides scope for the enforcement of competition law vis-a-vis anti-competitive licensing practices and conditions. The key operative provisions are Articles 40 and 31, especially 31(k). In addition, Article 8.2 provides general recognition that appropriate measures may be needed to prevent the abuse of IP rights by rights holders. Generally speaking, the provisions regarding anti-competitive practices (especially Article 40) generally are permissive rather than prescriptive in nature. The only exception is the right to consultations under Article 40.3.
Article 40.1 recognizes that licensing practices that restrain competition may have adverse effects on trade or may impede technology transfer/diffusion. Article 40.2 permits WTO Members to specify anti-competitive practices constituting abuses of IPRs and to adopt measures to prevent or control such practices. Such practices may include exclusive grantbacks, clauses preventing validity challenges and coercive package licensing. It is important to note that the list of anti-competitive practices that may be addressed in Article 40.2 is a non-exhaustive list. Article 40.2 also spells out measures adopted to address such practices must be consistent with other provisions of the Agreement.
Article 31 sets out detailed conditions for the granting of compulsory licences aimed at protecting the legitimate interests of rights holders. Article 31(k) in particular provides for the non-application of two such conditions where a compulsory licence is granted to remedy “a practice determined after judicial or administrative process to be anti-competitive” (). Under this Article, the conditions which may thereby be rendered non-applicable include: (i) the requirement to first seek a voluntary licence from the right holder; and (ii) the requirement that use pursuant to a compulsory license be predominantly for the supply of the domestic market.
The above notwithstanding, there are several questions that have been left unanswered. Firstly, the set of licensing practices (beyond those referred to in article 40.2) which may constitute actionable abuses under Members’ competition laws have not been provided. Secondly, the standards under which such practices should be
reviewed (e.g. per se or “rule of reason”) are not ascertainable. Thirdly, it is not clear what constitutes an adequate “judicial or administrative process” for purposes of Article 31(k). Fourthly, the appropriate remedies to be employed are not set out. More generally, the optimal/appropriate application of competition law in relation to “new/emerging issues” (pay for delay agreements, hold-ups in the case of standard-essential patents, trolling, etc.) needs to be addressed.
Sources: Robert Anderson, Presentation at WIPO-WTO Colloquium for Teachers of Intellectual Property, June 13-24, 2016
Interface Between Intellectual Property and Competition Policy
