YEARBOOK 2009 / I - AIPPI

may vary since there is a huge variety of situations related to the transfers of the co-owned
share.
Notably, one could imagine that the transfer is operated on the whole share of the co-owned
IP right, but it also could be simply an assignment of a part of the co-owned share, creating
therefore an additional co-owner of an IP right.
And such transfer of a part of a share of an IP Right could be used to overcome the limitation
which could exist on the granting of licences by the co-owners.
The Groups are therefore invited to precise their position on the question of the transfer or
assignment of a share of the co-owned IP Right, taking into the consideration the different
situations which may occur (the transfer of the whole share of a co-owned IP Right or the
transfer only of the part of the share of the co-owned IP Right).
According to the general rules on co-ownership established by the BCC, each co-owner
is free to exercise all ownership rights to the undivided asset, but should observe some
conditions, concerning the right to sell and assign its respective share (BCC, article 1322
and its sole paragraph). These general rules should be regarded with extreme caution when
applied to IP co-owned rights.
As previously mentioned (items 2 and 3, above) the Brazilian Group understands that a
feasible solution could encompass the establishment of a mandatory right of first refusal
(preference) concerning any co-owner right, assignment and/or licensing of the jointly owned
IP right.
5) The exercise of an IP right co-owned by two or more co-owners each of whom has in principle
the right to exploit the co-owned right, may also raise difficulties from the point of view of
competition rules.
The co-owned IP Rights may give the co-owners the dominant position on the market and their
agreement on the co-owned IP Rights (when for example it prohibits the licensing) may also
be seen as eliminating the competitors from the market.
The groups are therefore invited to explain if their national laws had to treat such situations
and what were the solutions adopted in those cases.
The situation is likely to receive no special treatment under the Brazilian Law than other coownership
or other usual situations (such a specific purpose company, a joint venture, or any
other form of association among companies). If by consequence of a co-ownership of an IP
Right a dominant position under a market is established, Brazilian Competition Law (Law nb.
8,884/94) would be applied.
It is likely that Brazilian Antitrust Law could be applied to a similar situation, mainly because
the impact of the agreement on the market is a matter of public interest and the antitrust
provisions are aimed to the effects of the co-ownership on the market. Brazilian Antitrust Law
defines as a “dominant position” the control of a 20% share of the relevant market. Thus,
situations among companies that combined control less than 20% of the relevant market
usually are not scrutinized by the Brazilian antitrust authorities. Concerning license limitations,
article 21, X of Brazilian Competition Law should also be considered.
(The mentioned article provides that certain actions, such as but not limited to the ones listed
therein, may be considered anti-competitive. Among the listed actions, the referred item X
mentions the regulation of markets of goods and services by means of agreements for the
purpose of limiting or controlling the research and development, the production of goods
and the supply of services, or for the purpose of jeopardising investments for production and
distribution of goods and services.)
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