WIPO Journal - World Intellectual Property Organization

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222 The WIPO Journal 3. that the service in itself was indispensable to carrying on that person’s business, inasmuch as there is no actual or potential substitute in existence for the service (“indispensability” test). Three years later, in IMS Health, the court revisited the three main conditions in Magill essential to a finding of “exceptional circumstances” in which a compulsory licence could be obtained. It indicates that the Magill conditions did not offer an exhaustive definition of the test of “exceptional circumstances”. As one commentator noted, the court carefully referred to Magill as a case in which “such exceptional circumstances were present”, and held that “‘it is sufficient’ (rather than ‘it is necessary’) to satisfy the three Magill criteria in order to show an abusive refusal to license”. 36 As such, in IMS Health, the court seemed to provide a leeway for including other types of abuse in the category of “exceptional circumstances”. Later, in Microsoft, 37 the ECJ reiterated the point that IMS Health did not establish an exhaustive list of exceptional circumstances. It further revised and clarified the basis upon which “exceptional circumstances” can be identified, particularly the “new product” test. It added that the Magill and IMS Health “new product” rule, “cannot be the only parameter which determines whether a refusal to license an IPR is capable of causing prejudice to consumers within the meaning of Article 82(b) EC … such prejudice may arise where there is a limitation not only of production or markets, but also of technical development.” 38 It is clear that, in Microsoft, the ECJ established a new framework for analysing the test of refusal to supply under art.82(b) EC Treaty of Rome, which for the first time, “declares it an abuse to limit technical development to the prejudice of consumers”. 39 This framework is markedly different from the test in former ECJ cases. 40 This suggests that, unlike the US competition law (which uses “rule of reason” analysis as a simple balancing test), the ECJ will in the future take into account both “consumer efficiencies” and “incentives to innovate” arguments when determining whether a refusal of licensing an IPR is an IP abuse. As one commentator noted: “When [IP abuse] conduct occurs in the ICT sector, another policy comes into play. The preservation of a competitor from the exclusionary abuse of a dominant firm does not only mean a desire to preserve competition in a market; it is also a desire to preserve the possibility for future innovation. Existing competitors with high quality products offer a disincentive for the dominant firm to sit on its existing products; a duopoly is more conducive to innovation than a complacent monopolist. 41 ” It is also noteworthy that, in recent Guidance on the Commission’s enforcement priorities in applying art.82 of the EC Treaty to abusive exclusionary conduct by dominant undertakings, it seems that the EC Competition Commission has formally adopted a “consumer harm” test in refusal to supply cases including IPRs. It states that refusal to supply will be given enforcement priority by the Commission if three cumulative circumstances are present: 36 Anderman and Schmidt, “EC Competition Policy and IPRs” in The Interface Between Intellectual Property Rights and Competition Policy, 2007, p.62. See also John Kallagher, “Recent Development under Article 82”, talk given to IBC Conference, London, April 30, 2004. 37 Microsoft v Commission (T-201/04) [2007] E.C.R. II-3601; [2007] 5 C.M.L.R. 11. It unambiguously confirms that the prohibitions of art.82 if the EC Treaty continue to determine the line between the “normal exercise” and “abusive exercise” of IP laws. 38 “Innovation incentive” test and “consumer harm” test. Microsoft v Commission [2007] E.C.R. II-3601; [2007] 5 C.M.L.R. 11. at [647], cited by Anderman, The Relationship Between Competition Policy and Intellectual Property Rights, 2009, p.7. 39 Anderman, The Relationship Between Competition Policy and Intellectual Property Rights, 2009, p.7. 40 Katarzyna A. Czapracka, “Where Antitrust Ends and IP Begins — On the Roots of the Transatlantic Clashes” (2006) 9 Yale Journal of Law & Technology 44. See the text between fnn.221 and 229. 41 Anderman, The Relationship Between Competition Policy and Intellectual Property Rights, 2009 at 10. (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
“• the refusal relates to a product or service that is objectively necessary to be able to compete in a downstream market [objective justification test], • the refusal is likely to lead to the elimination of effective competition on the downstream market [secondary market competition elimination test], and • the refusal is likely to lead to consumer harm [consumer harm test].” 42 It is clear that, unlike the United States, the ECJ’s decision mainly rested on a prediction of future technological and market development. 43 By taking into account pro-innovation and consumer efficiency effects, the EC competition law approach on IP abuse prevention seems to be more in line with the objective provision in art.8 and the competition provision in art.40 of the TRIPS Agreement. As mentioned above, arts 8 and 40 authorise Member States to take any appropriate measures to prevent the abuse of IPRs which “restrains competition”, “restrains trade” and has adverse effects on “technology dissemination”. It arguably creates a friendlier legal environment for many ICT companies (particularly non-dominant companies) to fairly participate in market competition and to make further innovation. The experiences of the EC are arguably valuable for other countries, including Australian competition regulators, to enforce competition laws in the IP area, including determining and preventing the abuse of IPRs in the ICT sector. IP abuse prevention in Australian competition law Historical background Competition Law and IP Abuse Prevention in Australia 223 In Australia, regulators have started to consider addressing the enforcement of competition law in the IP fields since the 1980s. The Trade Practices Act 1974 (Cth) (TPA) contained a special provision on IP and provided partial exemptions for an IP-related “condition” in technology licensing and assignment agreements. 44 In 1991, the Australian competition law enforcement agency, the then Trade Practices Commission (TPC), issued a Guideline — Application of the Trade Practices Act to IP in order to clarify the interface of IP and competition laws and enhance the enforcement of competition law in the IP field. Over the past three decades, globalisation, technologies and liberalisation have constantly brought new challenges for the TPA, 45 including its enforcement in the IP area. As a response, the Australian Government has established a number of governmental review committees to examine the effects of the TPA in balancing IP protection, innovation stimulation and competition enforcement, such as the Industrial Property Advisory Committee (IPAC) in 1984, the National Competition Council (NCC) in 1999, the Intellectual Property and Competition Review Committee (IPCRC) in 2001 and the Trade Practices Review Committee (Dawson Committee) in 2003. Moreover, the Australian Government released a National Innovation Policy Agenda to 2020 in May 2009, which contained a special section on innovation-related regulation. 46 Generally speaking, Australia has closely followed the international debate on competition law enforcement in the IP area. It seems that the Government has well recognised key principles of the current international community in this difficult area, particularly the legal approaches of advanced countries which have developed sophisticated IP and competition laws and policies. For example, Australian Government has acknowledged that IP and competition laws share consistent legislative goals in enhancing 42 See European Commission, Guidance on the Commission’s Enforcement Priorities in Applying article 82 of the EC Treaty to Abusive Exclusionary Conduct by Dominant Undertakings (text with EEA relevance), [2009] OJ C 45/02, para. 81, at http://eur-lex.europa.eu/LexUriServ/LexUrirv.do?uri =OJ:C:2009:045:0007:0020:EN:PDF [Accessed March 30, 2011]. 43 William H. Page, “Microsoft and the Limits of Antitrust” (2010) 6 Journal of Competition Law & Economics 33, 49. 44 Trade Practices Act 1974 (Cth) s.51(3). 45 Allan Fels, “Looking back on Ten Years of Australian Competition Law” (2003) 11 Competition and Consumer Law Journal 117, 117. 46 Commonwealth of Australia, Powering Ideas: An Innovation Agenda for the 21st Century (2008), p. 55, at http://www.innovation.gov.au /innotionreview/documents/poweringideas_fullreport.pdf [Accessed March 30, 2011]. (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
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THE WIPO JOURNAL: ANALYSIS OF INTEL
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The WIPO Journal Table of Contents
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The Juridification of Indigenous Kn
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Indigenous knowledge systems and ex
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One of the unresolved issues was wh
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The Juridification of Indigenous Kn
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Registration of traditional knowled
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ight to equitable remuneration and
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Asia and America where it is sold c
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The Economic Effects of Geographica
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minimum quality standards for regio
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Belletti et al. used a case-study a
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Sensitivity analysis As shown in Ta
Page 33 and 34: the domestic perspective. This addi
Page 35 and 36: Filing date requirements under the
Page 39 and 40: • while some provisions of the PL
Page 41 and 42: If an applicant files the internati
Page 43 and 44: However, it was noted in the Workin
Page 47 and 48: Before the Reform of the PCT in vie
Page 49 and 50: — where the priority application
Page 53 and 54: “Bending” of PCT articles in th
Page 57 and 58: Not introducing the PLT requirement
Page 59 and 60: on the future direction of global I
Page 61 and 62: IP in Global Governance: A Venture
Page 63 and 64: negotiated. 28 Similarly, the WIPO
Page 65 and 66: IP overreach: The dangers of a boom
Page 67 and 68: As part of the social cost or the
Page 73 and 74: “geographical, historical and reg
Page 75 and 76: facilitated the integration of the
Page 79 and 80: Competition Law and IP Abuse Preven
Page 81 and 82: Although the TRIPS Agreement has be
Page 83: vertical licensing agreements; and
Page 87 and 88: Nevertheless, so far as s.51(1) is
Page 89 and 90: “In bridging the different polici
Page 91 and 92: a third party’s access to their I
Page 93 and 94: Competition Law and IP Abuse Preven
Page 95 and 96: should further take into account
Page 97 and 98: Cumulative Index This index has bee
Page 99 and 100: Parallel imports economics and law,
Page 101: *412409* 2011 VOLUME 2 ISSUE 2 THE
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