1. 26/28/04/2014 – Licensing Agreements HG-7 - 1 - Commercialization Procedures: Technology Acquisition/Marketing/ Valuation/Licensing, Companies Legal Contracts and Agreements Heinz Goddar Boehmert & Boehmert

2. 26/28/04/2014 – Licensing Agreements HG-7 - 2 - Types of License Agreements n Exclusive n Sole n Non-Exclusive

3. 26/28/04/2014 – Licensing Agreements HG-7 - 3 - Financial Terms in License Agreements n Running Royalties n Minimum Royalties n Downpayment

4. 26/28/04/2014 – Licensing Agreements HG-7 - 4 - Minimum Royalties n Based on business plan n Absolute payment obligations? n Trigger for termination/ modification

5. 26/28/04/2014 – Licensing Agreements HG-7 - 5 - Warranties n Protection n Freedom n Technical/Product Liability

6. 26/28/04/2014 – Licensing Agreements HG-7 - 6 - 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

7. 26/28/04/2014 – Licensing Agreements HG-7 - 7 - 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

8. 26/28/04/2014 – Licensing Agreements HG-7 - 8 - 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

9. 26/28/04/2014 – Licensing Agreements HG-7 - 9 - 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

10. 26/28/04/2014 – Licensing Agreements HG-7 - 10 - 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

11. 26/28/04/2014 – Licensing Agreements HG-7 - 11 - 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

12. 26/28/04/2014 – Licensing Agreements HG-7 - 12 - 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