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

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.