IDEAS home Printed from https://ideas.repec.org/p/kyo/wpaper/1073.html
   My bibliography  Save this paper

Further Reasons for the “But for†Defense of a Grant-Back Clause and the Attribute of Innovation

Author

Listed:
  • Masahito Ambashi

    (Institute of Economic Research, Kyoto University)

Abstract

This study investigates the effect of grant-back clauses in licensing agreements using a different analytical manner from that of Ambashi, Régibeau, and Rockett (2019) (abbreviated by “ARR†). Both this study and theirs focus on attributes of innovations categorized as either “severable†(noninfringing) or “nonseverable†(infringing). The European Commission’s 2004 Technology Transfer Guidelines consider a grant-back clause applied to nonseverable innovation innocuous. In contrast, those guidelines indicate that a grant-back clause that applies to severable innovation should be treated with much greater skepticism. However, this study reveals that this guidance requires further debate concerning prohibitions on territorial restraints and multiple heterogeneous licensees, as well as other factors noted in the work of ARR.

Suggested Citation

  • Masahito Ambashi, 2022. "Further Reasons for the “But for†Defense of a Grant-Back Clause and the Attribute of Innovation," KIER Working Papers 1073, Kyoto University, Institute of Economic Research.
    • Handle: RePEc:kyo:wpaper:1073
    as

    Download full text from publisher

    File URL: https://www.kier.kyoto-u.ac.jp/wp/wp-content/uploads/2022/02/DP1073.pdf
    Download Restriction: no
    ---><---

    References listed on IDEAS

    as
    1. Suzanne Scotchmer, 1996. "Protecting Early Innovators: Should Second-Generation Products Be Patentable?," RAND Journal of Economics, The RAND Corporation, vol. 27(2), pages 322-331, Summer.
    2. 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.
    3. Suzanne Scotchmer, 1991. "Standing on the Shoulders of Giants: Cumulative Research and the Patent Law," Journal of Economic Perspectives, American Economic Association, vol. 5(1), pages 29-41, Winter.
    Full references (including those not matched with items on IDEAS)

    Most related items

    These are the items that most often cite the same works as this one and are cited by the same works as this one.
    1. Rockett, Kate & Régibeau, Pierre & Ambashi, Masahito, 2016. "Grantbacks, Territorial Restraints, and the Type of Follow-On Innovation: The "But for..." Defense," CEPR Discussion Papers 11575, C.E.P.R. Discussion Papers.
    2. Ambashi, Masahito & Régibeau, Pierre & Rockett, Katharine E., 2019. "Grantbacks, territorial restraints, and innovation," International Journal of Industrial Organization, Elsevier, vol. 67(C).
    3. Llanes Gastón & Trento Stefano, 2011. "Anticommons and Optimal Patent Policy in a Model of Sequential Innovation," The B.E. Journal of Economic Analysis & Policy, De Gruyter, vol. 11(1), pages 1-27, August.
    4. Fershtman, Chaim & Markovich, Sarit, 2010. "Patents, imitation and licensing in an asymmetric dynamic R&D race," International Journal of Industrial Organization, Elsevier, vol. 28(2), pages 113-126, March.
    5. Roland Kirstein & Birgit Will, 2006. "Efficient compensation for employees' inventions," European Journal of Law and Economics, Springer, vol. 21(2), pages 129-148, April.
    6. Grönqvist, Charlotta, 2009. "Empirical studies on the private value of Finnish patents," Bank of Finland Scientific Monographs, Bank of Finland, volume 0, number sm2009_041, March.
    7. David Moroz, 2005. "Production of Scientific Knowledge and Radical Uncertainty: The Limits of the Normative Approach in Innovation Economics," European Journal of Law and Economics, Springer, vol. 20(3), pages 305-322, November.
    8. Hall, Bronwyn H. & Ham Ziedonis, Rosemarie, 1999. "Patent Paradox Revisited: Determinants of Patenting in the U.S. Semiconductor Industry, 1980-94," Department of Economics, Working Paper Series qt1rg1088v, Department of Economics, Institute for Business and Economic Research, UC Berkeley.
    9. Jean O. Lanjouw, 2004. "Propriété intellectuelle et développement ou comment imposer au monde un système perverti : commentaires," Revue d’économie du développement, De Boeck Université, vol. 12(3), pages 145-153.
    10. Anja, Breitwieser & Neil, Foster, 2012. "Intellectual property rights, innovation and technology transfer: a survey," MPRA Paper 36094, University Library of Munich, Germany.
    11. Stefano Comino & ?Fabio Manenti & ?Antonio Nicol•, 2007. "Sequential innovations with unobservable follow-on investments," "Marco Fanno" Working Papers 0041, Dipartimento di Scienze Economiche "Marco Fanno".
    12. Jean O. Lanjouw & Mark Schankerman, 1997. "Stylized Facts of Patent Litigation: Value, Scope and Ownership," NBER Working Papers 6297, National Bureau of Economic Research, Inc.
    13. Mabrouki, Mohamed, 2018. "Le brevet : un instrument efficace pour promouvoir l’innovation au profit de la croissance ou un mal nécessaire ? [Patent: an effective instrument to promote innovation for the benefit of growth or," MPRA Paper 85752, University Library of Munich, Germany.
    14. Bronwyn H. Hall, 2009. "Business And Financial Method Patents, Innovation, And Policy," Scottish Journal of Political Economy, Scottish Economic Society, vol. 56(4), pages 443-473, September.
    15. Nancy Gallini & Suzanne Scotchmer, 2002. "Intellectual Property: When Is It the Best Incentive System?," NBER Chapters, in: Innovation Policy and the Economy, Volume 2, pages 51-78, National Bureau of Economic Research, Inc.
    16. Mohamed MABROUKI, 2018. "Patent Life And Scope: What Is The Optimal Combination?," Journal of Smart Economic Growth, , vol. 3(2), pages 71-105, December.
    17. Grönqvist, Charlotta, 2009. "Empirical studies on the private value of Finnish patents," Scientific Monographs, Bank of Finland, number 2009_041.
    18. Pénin, Julien & Wack, Jean-Pierre, 2008. "Research tool patents and free-libre biotechnology: A suggested unified framework," Research Policy, Elsevier, vol. 37(10), pages 1909-1921, December.
    19. Schankerman, Mark & Scotchmer, Suzanne, 2000. "Damages and injunctions in protecting proprietary research tools," LSE Research Online Documents on Economics 177, London School of Economics and Political Science, LSE Library.
    20. Mark A. Lemley & Carl Shapiro, 2005. "Probabilistic Patents," Journal of Economic Perspectives, American Economic Association, vol. 19(2), pages 75-98, Spring.

    More about this item

    Keywords

    Grant-back clause; Patent; Licensing; Severable and nonseverable innovation;
    All these keywords.

    JEL classification:

    • O31 - Economic Development, Innovation, Technological Change, and Growth - - Innovation; Research and Development; Technological Change; Intellectual Property Rights - - - Innovation and Invention: Processes and Incentives
    • O34 - Economic Development, Innovation, Technological Change, and Growth - - Innovation; Research and Development; Technological Change; Intellectual Property Rights - - - Intellectual Property and Intellectual Capital

    NEP fields

    This paper has been announced in the following NEP Reports:

    Statistics

    Access and download statistics

    Corrections

    All material on this site has been provided by the respective publishers and authors. You can help correct errors and omissions. When requesting a correction, please mention this item's handle: RePEc:kyo:wpaper:1073. See general information about how to correct material in RePEc.

    If you have authored this item and are not yet registered with RePEc, we encourage you to do it here. This allows to link your profile to this item. It also allows you to accept potential citations to this item that we are uncertain about.

    If CitEc recognized a bibliographic reference but did not link an item in RePEc to it, you can help with this form .

    If you know of missing items citing this one, you can help us creating those links by adding the relevant references in the same way as above, for each refering item. If you are a registered author of this item, you may also want to check the "citations" tab in your RePEc Author Service profile, as there may be some citations waiting for confirmation.

    For technical questions regarding this item, or to correct its authors, title, abstract, bibliographic or download information, contact: Makoto Watanabe (email available below). General contact details of provider: https://edirc.repec.org/data/iekyojp.html .

    Please note that corrections may take a couple of weeks to filter through the various RePEc services.

    IDEAS is a RePEc service. RePEc uses bibliographic data supplied by the respective publishers.