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Grantbacks, Territorial Restraints and the Type of Follow-On Innovation: The "But for..." Defence

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  • Ambashi, M
  • Régibeau, P
  • Rockett, K

Abstract

We analyse the effect of grantback clauses in licensing contracts. While competition authorities fear that grantback clauses might decrease the licensee?s ex post incentives to innovate, a standard defence is that grantback clauses are required for the patent-owner to agree to license its technology in the first place. We examine the validity of this ?but for? defence and the equilibrium effect of grantback clauses on the innovation incentives of the licensee for both non-severable and severable innovations. Under the 2004 EU Technology Transfer Guidelines , and the guidelines for some other jurisdictions, grantback clauses that apply to ?non - severable? (read ?infringing?) innovations are considered to be less controversial than clauses that apply to ?severable? innovations. We show, to the contrary, that grantback clauses do not increase the patent- holder?s incentives to license when non-severable innovations are at stake but they do when severable innovations are concerned ? suggesting that the ?but for? defence might be valid for severable innovations but not for non-severable ones. Moreover we show that, for severable innovations, grantback clauses can increase the range of parameters for which follow-on innovation by the licensee occurs.

Suggested Citation

  • Ambashi, M & Régibeau, P & Rockett, K, 2016. "Grantbacks, Territorial Restraints and the Type of Follow-On Innovation: The "But for..." Defence," Economics Discussion Papers 17805, University of Essex, Department of Economics.
    • Handle: RePEc:esx:essedp:17805
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    References listed on IDEAS

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    1. Jerry R. Green & Suzanne Scotchmer, 1995. "On the Division of Profit in Sequential Innovation," RAND Journal of Economics, The RAND Corporation, vol. 26(1), pages 20-33, Spring.
    2. Jay Pil Choi, 2002. "A Dynamic Analysis of Licensing: The "Boomerang" Effect and Grant-Back Clauses," International Economic Review, Department of Economics, University of Pennsylvania and Osaka University Institute of Social and Economic Research Association, vol. 43(3), pages 203-229, August.
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    5. Maria Pluvia Zuniga & Dominique Guellec, 2009. "Who Licenses out Patents and Why?: Lessons from a Business Survey," OECD Science, Technology and Industry Working Papers 2009/5, OECD Publishing.
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    Cited by:

    1. Ambashi, Masahito & Régibeau, Pierre & Rockett, Katharine E., 2019. "Grantbacks, territorial restraints, and innovation," International Journal of Industrial Organization, Elsevier, vol. 67(C).

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    More about this item

    JEL classification:

    • K21 - Law and Economics - - Regulation and Business Law - - - Antitrust Law
    • L24 - Industrial Organization - - Firm Objectives, Organization, and Behavior - - - Contracting Out; Joint Ventures
    • O31 - Economic Development, Innovation, Technological Change, and Growth - - Innovation; Research and Development; Technological Change; Intellectual Property Rights - - - Innovation and Invention: Processes and Incentives

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