A Couple of Commentaries on Genentech v. Hoechst

1. Last July I blogged on the CJEU's decision in Genentech v. Hoechst, in which the court held that a patent licensee is obligated to pay royalties prior to termination of the license, even if the patent is held to be invalid or not infringed.  (For an earlier blog post of mine on the case, see here.)  In other words, if the licensee stopped paying royalties prior to terminating the license, it's obligated to pay up until the point of termination.  The September 2016 issue of the German law journal GRUR (Gewerblicher Rechtsschutz und Urheberrecht) published the German text of the decision, along with a short commentary (also in German, at pp. 919-20) by Mary-Rose McGuire and Natalie Ackermann.  The authors discuss, among other things, Genentech's argument that it shouldn't have had to pay pre-termination royalties, because this would put licensees in a worse position than infringers.  The authors reject that argument, stating that the view (in Germany) that an adjudicated infringer has a claim for restitution of the damages it paid for use of an invalid patent should apply, if at all, only if the infringer itself was a party to the invalidation proceeding.  (For previous discussion of this view on this blog, see here.)  The authors also argue (and I agree, for reasons stated in the blog post linked to above) that the rule Genentech was advocating would be undesirable from an economic point of view

In addition, the authors also think it is interesting that the underlying case from which the question was referred to the CJEU was an arbitration proceeding.  They find it significant that the CJEU accepted the referral, and conclude that the rules of competition law belong to international compulsory business law, which in the public interest must be enforced.

2.   Jérôme Passa also has published an article on the case, titled Les redevances de licence dues après l'annulation du brevet en droit de la concurrence ("License royalties due after the cancellation of a patent in competition law", in the October 2016 issue of the French law journal Propriété Industrielle (pp. 8-12).  Here is the abstract (my translation):

Commentary on the Genentech judgment by which the Court of Justice, ruling on the interpretation of TFEU article 101, has adjudicated the important question of the impact of cancellation of the patent on a license that is still in effect and, more particularly, on the royalties due from the licensee.  The judgment sustains a certain number of critiques because, although rendered in terms of the rules of competition law, the analysis conducted under the law of intellectual property, though essential, appears insufficient in various respects.