26/28/04/2014 – Licensing Agreements HG Commercialization Procedures: Technology Acquisition/Marketing/ Valuation/Licensing, Companies Legal Contracts and Agreements Heinz Goddar Boehmert & Boehmert

26/28/04/2014 – Licensing Agreements HG Types of License Agreements n Exclusive n Sole n Non-Exclusive

26/28/04/2014 – Licensing Agreements HG Financial Terms in License Agreements n Running Royalties n Minimum Royalties n Downpayment

26/28/04/2014 – Licensing Agreements HG Minimum Royalties n Based on business plan n Absolute payment obligations? n Trigger for termination/ modification

26/28/04/2014 – Licensing Agreements HG Warranties n Protection n Freedom n Technical/Product Liability

26/28/04/2014 – Licensing Agreements HG Peculiarities of Trademark Licensing Agreements n Quality Control Provisions n Exhaustion Aspects n “Partial“ Licensing of Trademarks possible n Licensing and Use of a Trademark

26/28/04/2014 – Licensing Agreements HG Technology Transfer Block Exemption Regulation (TTBER) (EC) No. 772/2004 n Has replaced TTBER 240/96 EEC from May 1, 2004 n is accompanied by extensive Guidelines n TTBER 772/2004 and Guidlines “deny“ any presumption of a violation of Art. 81(1) EU Treaty by Technology License Agreements

26/28/04/2014 – Licensing Agreements HG Kinds of Agreements Covered n Patent licenses n Know-how licenses n Copyright computer software licenses n Mixed licenses n Note: “patents“ comprise patents, SPCs, utility models, designs, topographies, plant varieties

26/28/04/2014 – Licensing Agreements HG Market Thresholds n Parties competitors u  20% joint market share n Parties non-competitors u Initially each party  30% n In case of later excess u Exemption applicable for 2 consecutive years after 1st excess year

26/28/04/2014 – Licensing Agreements HG Hard Core Restrictions in Case of Competitors n Price fixing n Limitation of output/sale n Allocation of markets/customers, except (permitted) u Field of use restrictions u Exclusivity of license as such u Prohibition of active/passive sales into territories of licensor and licensee, respectively u Prohibition of active sales into territories of other licensees u Restriction of manufacturing to own use of licensee n Restriction of licensee to use own technology n Restriction of parties to carry out R&D, except when necessary to prevent disclosure of licensed know-how to third parties

26/28/04/2014 – Licensing Agreements HG Hard Core Restrictions in Case of Non-Competitors n Fixing of minimum prices n Restriction of passive sales of licensee, except (permitted): u Prohibition of sales to territory/customer exclusive to licensor u Prohibition of sales to territory/customer exclusive to another licensee for two years after marketing by the other licensee u Restriction of manufacturing to own use of licensee only u Restriction of sales to end-users, if licensee is wholesaler u Restriction of active or passive sales to end users if licensee belongs to selective distribution retail system n Parties remain Non-Competitors if they have been such at conclusion of agreement

26/28/04/2014 – Licensing Agreements HG Excluded Restrictions n Exclusive improvement grant back obligation on licensee n Improvement assignment obligation on licensee n Non-attack clause n If parties non-competitors, restriction of licensee to use own technology and restriction of parties to carry out R&D, except when necessary to prevent disclosure of licensed know-how to third parties