CLIP Of The Month: Patent Pledges And EU Competition Law

• Published date: 03 November 2021
• Subject Matter: Anti-trust/Competition Law, Intellectual Property, Antitrust, EU Competition , Patent
• Law Firm: Bristows
• Author: Ms Pat Treacy and Roosa Tarkiainen

This blog often deals with the competition law implications of owning Standards Essential Patents ('SEPs') and of the obligations accepted by patentees under the IP policies of the various Standards Setting Organisations ('SSOs') which tend to result in widespread licensing of those patents. This month's CLIP is an article by Natacha Estèves (subscription needed) examining whether patent pledges made outside SSOs may give rise to concerns under EU competition law. The article concludes that while there are some slight concerns with some of the obligations that accompany some of the existing patent pledges, for the most part voluntary patent pledges are likely to be compatible with EU competition law.

What is a patent pledge

The article adopts the Contreras definition¹ of patent pledges as "[public] commitments voluntarily made by patent holders to limit the enforcement or other exploitation of their patents". While one example of a patent pledge is a FRAND commitment given in the context of an SSO as mentioned above, the article focuses on patent pledges made outside SSOs. The author refers to the pledge by Tesla in 2014 that it "will not initiate patent lawsuits against anyone who . wants to use . [its technology]" as a classic example of such a pledge.

Estèves notes that patent pledges can be split into two types: co-ordinated and unilateral. The former are made by members of a specific group according to a predetermined format or agreement, and the latter are made by a single undertaking acting independently. Examples of co-ordinated patent pledges analysed in the article include the Open Invention Network, the License-on-Transfer Network, and the Defensive Patent Licence. In addition to the Tesla pledge mentioned above, the author also refers to other unilateral patent pledges such as IBM's patent pledge in 2005 and Google's Open Patent Non-Assertion Pledge in 2013.

Co-ordinated patent pledges under Article 101 TFEU

The article analyses the competition law treatment of co-ordinated patent pledges by analogy with that of multi-party licensing. Estèves comments that co-ordinated patent pledges are also similar to patent pools in that both involve the formation of a group where patent holders cross-license their patents. According to the author, the major difference between the two arrangements is that the objective of co-ordinated pledges is to protect members from litigation rather than to facilitate licensing to outside licensees. In Estèves' view...