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Block Exemption Communiqué on Technology Transfer Agreements (Communiqué No. 2008/2)

 BLOCK EXEMPTION COMMUNIQUÉ RELATING TO TECHONLOGY TRANSFER

GENERAL PREAMBLE OF THE BLOCK EXEMPTION COMMUNIQUÉ

RELATING TO TECHNOLOGY TRANSFER AGREEMENTS1

Technology transfer agreements which involve intellectual property rights —

referring to patents, utility models, industrial designs, integrated circuit topographies,

plant breeders’ rights or software rights — and know-how, may bring about various

economic efficiencies such as encouraging research and development activities,

preventing waste of resources through duplication of research and developments,

facilitating the dissemination of the knowledge and technology resulting from the

aforementioned research and development activities, increasing competition by new

and higher quality products brought to market. In addition to the aforementioned

economic efficiencies, as intellectual property rights bestow monopolistic powers to

their holders, technology transfer agreements involving such rights, considering also

certain other provisions they contain, may lead to the restriction of competition to a

certain extent; therefore the said agreements may result in being dealt with under

competition law.

Technology transfer agreements whereby the above mentioned intellectual

property rights are licensed are basically regulated within the framework of the

legislation relating to those rights. The said legislation allows for provisions, such as

granting of exclusive licenses, which may be restrictive of competition under certain

circumstances, to be included in technology transfer agreements. In this context,

considering the existence of legal arrangements for intellectual property rights, which

are within the scope of the said agreements, and the powers bestowed by these

arrangements to the right holders, the interface between such powers and

competition law regulations must be specified. This Communiqué provides for the

conditions whereby the provisions, contained in technology transfer agreements,

which are restrictive of competition under Article 4 of the Act on the Protection of

Competition No. 4054, are granted exemption when they are accepted to satisfy the

requirements under Article 5 of the Act No. 4054.

1 This part relating to general preamble has not been published on the Official Gazette.

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In determining whether technology transfer agreements which are restrictive of

competition satisfy the requirements of exemption, the power, held especially by

those undertakings which are party to such agreements, within the relevant product

and technology market, must be taken into account. In other words, the existence of

substitutable technologies and substitutable products at the disposal of the

competitors of the aforementioned undertakings gains importance.

In the assessment of technology transfer agreements, paying attention to the

distinction whether the agreement is between competitors or not is quite important. It

is less likely for technology transfer agreements between non-competitors to affect

competition adversely than those that are between competitors. Therefore rules to be

applied to technology transfer agreements between competitors and between non-

competitors, and especially factors such as market share thresholds and limitations

which would exclude the agreement from the coverage of block exemption needed to

be differentiated.

Where the market shares of the undertakings which are party to technology

transfer agreements exceed the market share thresholds set forth under this

Communiqué, a detailed examination needs to be made so that it can be determined

whether the said agreements are caught by Article 4 of the Act No. 4054 and whether

they satisfy the requirements of exemption under Article 5. In making this

assessment, all of the legal and economic factors related to the agreements,

particularly the structure of the relevant technology and product market must be

taken into account.

This Communiqué aims at the protection of competition within the market and

provision of legal certainty to undertakings. To that end, the Communiqué gives the

general conditions of block exemption for technology transfer agreements and

enumerates the provisions which would prevent the said agreements from qualifying

for the block exemption. In addition to these, rather than the approach whereby an

agreement is excluded from the scope of the block exemption as a whole in relation

to certain obligations, it would be appropriate to adopt the practice whereby the

relevant obligations only are disqualified from block exemption and thus the

agreements containing these continue to qualify for the block exemption. Whereas

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the existence of issues such as market share thresholds, obligations which leave the

agreement out of the scope of the block exemption and obligations which are unable

to qualify for block exemption is generally sufficient to protect competition within the

market, the exemption will be withdrawn where it is established that an agreement or

networks of agreements which qualified for exemption under this Communiqué still

do not satisfy the requirements under Article 5 of the Act No. 4054.

Although this Communiqué covers only those technology transfer agreements

between a licensor and a licensee, the provisions not constituting the main purpose

of the agreement however directly relating to the implementation of the technology

concerned by the agreement, which are contained in these agreements, shall also be

covered by the exemption. This Communiqué shall also apply where technology

transfer agreements cover issues related to more than one level of trade such as the

obligations the licensee must impose on resellers, for example in relation to setting

up of a certain distribution system. However, in such a case, such obligations need to

be in conformity with the relevant Competition Board regulations. This Communiqué

shall not apply to supply and distribution agreements between licensee and their

buyers.

Among the other agreements to which the Communiqué shall not apply are

also the license agreements made through pooling of technologies in order to grant

license to third parties as a package. License agreements drawn up for the purpose

of having an undertaking carry out research and development activities shall not be

dealt with under this Communiqué either.

In consideration of the explanations given above, the Competition Board

decided that this Communiqué be published.

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BLOCK EXEMPTION COMMUNIQUÉ ON TECHNOLOGY TRANSFER AGREEMENTS

(Communiqué No: 2008/2)

Purpose

ARTICLE 1 – (1) The purpose of this Communiqué is to determine the conditions for granting block exemption to technology transfer agreements from the

application of the provisions of Article 4 of the Act No. 4054 dated 07.12.1994 on the

Protection of Competition.

Scope

ARTICLE 2 – (1) This Communiqué shall apply to technology transfer agreements in which the licensor authorizes the licensee to use the licensed

technology for the production of contract products and which fall under the scope of

Article 4 of the Act No. 4054.

Basis

ARTICLE 3 – (1) This Communiqué has been prepared depending on Article 4 and 5 and subparagraph (f) of Article 27 of the Act No. 4054.

Definitions

ARTICLE 4 – (1) For the purposes of this Communiqué the following definitions shall apply:

a) Technology transfer agreement means an agreement in which the relevant intellectual property rights and know how are licensed individually or mixedly.

Agreements containing provisions which relate to the sale and purchase of

products or which relate to the licensing or assignment of other intellectual

property rights shall be regarded to fall under this definition, provided that

those conditions do not constitute the primary object of the agreement and are

directly related to the production of the contract products.

b) Product means all products or services including intermediary goods and services.

c) Contract products means products produced with the licensed technology.

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d) Intellectual property rights means a patent, utility model, industrial design, integrated circuit topography, plant breeder’s right and related applications and

software rights.

e) Know-how means a confidential, substantial and identified package of knowledge resulting from experience and testing.

In this definition

1) Confidential means that know-how is not generally known or easily accessible as a whole or when pieced together or combined,

2) Substantial means that know-how is significant and useful for the production of the contract products,

3) Identified means that know-how is described in a sufficiently comprehensive and detailed manner so as to verify that it satisfies the

conditions for confidentiality and substantiality.

f) Competing undertakings (competitors) means undertakings which compete on the relevant technology and/or the relevant product market. In this context:

1) Competing undertakings on the relevant technology market are

undertakings which grant licenses related to competing technologies

(actual competitors on the technology market). The relevant technology

market covers technologies which are regarded by the licensees as

interchangeable with or substitutable for the licensed technology, in

respect of the technologies' characteristics, their license fees and their

intended use,

2) Competing undertakings on the relevant product market means

undertakings which, at the time of the conclusion of the technology

transfer agreement,

1. are already active on both the relevant product market and the

relevant geographic market (actual competitors on the relevant market)

or

2. would, from a realistic point of view, undertake the necessary

additional investments or necessary switching costs in order to timely

enter the relevant product market or the relevant geographic market in

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response to a small but significant increase in relative prices ( potential

competitors on the relevant market).

g) Selective distribution system means a distribution system where the licensor licenses the production of the contract products only to licensees

selected on the basis of specific criteria and where these licensees undertake

not to sell the contract products to unauthorized distributors.

h) Exclusive territory means a territory in which only one undertaking is allowed to produce and sell the contract products with the licensed technology. On the

other hand, the fact that a license is given to another person for the production

of contract products within the related territory in order to create an alternative

source of supply for a specific customer does not prejudice the exclusivity

nature of that territory.

i) Exclusive customer group means a group of customers to which only one undertaking is allowed to actively sell the contract products produced with the

licensed technology.

j) Severable improvement means an improvement that can be used without infringing the right on the licensed technology.

(2) The terms ‘undertaking’, ‘licensor’ and licensee shall include their connected undertakings.

(3) Connected undertakings means

(a) undertakings in which a party to the agreement, directly or indirectly:

1) has the power to exercise more than half the voting rights, or

2) has the power to appoint more than half the members of the

supervisory board, board of management or bodies legally representing the

undertaking, or

3) has the right to manage the undertaking's affairs;

(b) undertakings which directly or indirectly have, over a party to the

agreement, the rights or powers listed in (a);

(c) undertakings in which an undertaking referred to in (b) has, directly or

indirectly, the rights or powers listed in (a);

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(d) undertakings in which a party to the agreement together with one or more

of the undertakings referred to in (a), (b) or (c), or in which two or more of the

latter undertakings, jointly have the rights or powers listed in (a);

(e) undertakings in which the rights or the powers listed in (a) are jointly held

by:

1) parties to the agreement or their respective connected undertakings

referred to in (a) to (d), or

2) one or more of the parties to the agreement or one or more of their

connected undertakings referred to in (a) to (d) and one or more third parties.

General Conditions for Exemption

ARTICLE 5 – (1) The exemption granted by this Communiqué shall apply to technology transfer agreements which are entered between a licensor and a licensee

and which relate to the production of contract products. The exemption shall continue

to apply for as long as the protection granted to the intellectual property right

regarding the licensed technology is valid and in case of know-how, as long as the

know-how remains secret. In cases where the know-how becomes publicly known

because of the licensee, it shall continue to apply for during the term of the

agreement.

(2) Where the undertakings party to the agreement are competitors, the

exemption provided for in this Communiqué shall apply on condition that the total

market share of the parties does not exceed 30 % on the affected relevant

technology and product market.

(3) Where the undertakings party to the agreement are not competitors, the

exemption provided for in this Communiqué shall apply on condition that the total

market share of the parties does not exceed 40 % on the affected relevant

technology and product market.

(4) In terms of paragraphs 1 and 2, the market share on the relevant

technology market is defined depending on the presence of the licensed technology

on the relevant product market. The market share of the licensor on the relevant

technology market shall be the total market share of the contract products produced

by the licensor and the licensees on the relevant product market.

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Restrictions that render technology transfer agreements out of the scope of the block exemption

ARTICLE 6 – (1) Where a technology transfer agreement includes any of the restrictions laid down in this Article, the agreement shall not benefit from the block

exemption as a whole.

(2) Where undertakings party to the agreement are competitors, the exemption

provided for in this Communiqué shall not apply to the agreements which directly or

indirectly, individually or in combination with other factors that are under the control of

the parties have as their object:

a) The restriction of a party’s right to determine its sales prices.

b) The restriction of production and sales volumes of contract products.

c) The allocation of markets and customers except the following cases:

1) The obligation on the licensor and/or the licensee to or not to produce with

the licensed technology on one or more technical fields of use or product

markets or territories.

2) The obligation on the licensor not to give a license to a third party and not to

use the subject of the license on a particular territory.

3) The restriction of the active sales by the licensor and/or the licensee into the

territory or the customer group reserved for the other party. However, the

parties cannot be restricted directly or indirectly from making sales to third

parties which are present in their territories and which make sales into the

other territories or customer groups within the country.

4) The restriction of active sales by the licensee into a territory or a customer

group allocated by the licensor to another licensee. However, the parties

cannot be restricted directly or indirectly from making sales to third parties

which are present in their territories and which make sales into the other

territories or customer groups within the country.

5) The obligation on the licensee to produce the contract products only for its

own use. However the licensee shall not be restricted from actively or

passively selling the contract products as spare parts for its own products.

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6) The obligation on the licensee to produce the contract products for a

specific customer provided that the license is given in order to create an

alternative source of supply for that customer.

d) The restriction of a licensee’s right to use its own technology or the restriction of a

party’s right to carry out research and development activities unless such restriction

is necessary in order to prevent the disclosure of the licensed know-how to third

parties.

(3) Where undertakings party to the agreement are not competitors, the

exemption provided for in this Communiqué shall not apply to the agreements which

directly or indirectly, individually or in combination with other factors that are under

the control of the parties have as their object:

a) Restriction of a party’s right to determine its sales prices. On the other hand, it is

possible to determine the maximum sales price or recommend a sales price provided

that it does not develop into a fixed or minimum sales price as a result of pressure or

incentive from any of the parties.

b) The restriction of the territory into which, or of the customers to whom, the licensee

may passively sell the contract products, except the following cases:

1) The restriction of passive sales into an exclusive territory or to an exclusive

customer group reserved for the licensor.

2) The restriction of passive sales into an exclusive territory or to an exclusive

customer group allocated to another licensee during the first two years that

this other person is selling the contract products in that territory or to that

customer group.

3) The obligation on the licensee to produce the contract products for only its

own use. However, the licensee shall not be restricted from actively or

passively selling the contract products as spare parts for its own products.

4) The obligation on the licensee to produce the contract products for a

particular customer provided that the license is given in order to create an

alternative source of supply for that customer.

5) The restriction of active sales to end users by a licensee carrying out

activities at the wholesale level.

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6) The restriction of sales by members of a selective distribution system to

unauthorized distributors.

c) Restriction of active or passive sales to end users by a licensee carrying out

activities at the retail level without prejudice to the right to prohibit a member of a

selective distribution system from carrying out activities at an unauthorized place.

(4) Where undertakings party to the agreement are not competitors at the time

of the conclusion of the agreement but become competitors afterwards, paragraph 3

and not paragraph 2 shall apply during the term of the agreement. However, in order

for paragraph 3 to apply, the agreement shall not be substantially amended.

Restrictions that cannot benefit from the block exemption

ARTICLE 7 – (1) Where a technology transfer agreement contains any of the restrictions laid down in this article and the related restriction is separable from the

rest of the agreement, only that restriction shall not benefit from and the rest of the

agreement shall continue to be covered by the block exemption. Where any of the

restrictions laid down in this article cannot be separated from the rest of the

agreement, the whole agreement shall not benefit from the block exemption.

(2) The exemption provided for in this Communiqué shall not apply to the

following restrictions:

a) Any direct or indirect obligation on the licensee to grant an exclusive license to the

licensor or a third party designated by the licensor in respect of its own severable

improvements on or new applications of the licensed technology,

b) Any direct or indirect obligation on the licensee to assign, partly or completely, to

the licensor or a third party designated by the licensor the rights related to its own

severable improvements on or new applications of the licensed technology,

c) The obligation on the licensee not to challenge the validity of the related

intellectual property rights that the licensor owns in Turkey. However, the right of the

licensor to terminate the technology transfer agreement in case the licensee

challenges the validity of one or more of the related licensed intellectual property

rights is reserved.

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(3) Where undertakings party to the agreement are not competitors the

exemption provided for in this Communiqué shall not apply for any obligation which

directly or indirectly:

a) restricts the licensee’s right to use its own technology

b) restricts research and development activities of any of the parties to the agreement

unless it is necessary to prevent the disclosure of the licensed know-how to third

parties.

Withdrawal of the block exemption

ARTICLE 8 – (1) The Competition Board may withdraw the exemption provided for in this Communiqué, according to Article 13 of the Act No. 4054, in

cases where the Board finds that a technology transfer agreement covered by the

exemption provided for in this Communiqué has effects incompatible with Article 5 of

the Act No. 4054 and especially that entry of third parties’ technologies to the market

is restricted for instance because of the cumulative effects created by a network of

agreements containing similar restrictions that prohibit licensees from using third

parties’ technologies. The Competition Board shall request written or oral opinions

from parties before giving its final decision on withdrawal of exemption.

(2) Where parallel networks created by similar technology transfer agreements

cover more than 50 % of the relevant market, the Competition Board may, by a

communiqué which it shall further issue, render agreements containing particular

restrictions out of the scope the exemption provided for in this Communiqué. In this

case, the concerned parties shall be given sufficient time starting from the publication

date of such communiqué to fulfill its demands before it enters into force.

Application of the market share threshold

ARTICLE 9 – (1) The market shares provided for in this Communiqué shall be calculated on the basis of market sales value. If market sales value data are not

available, estimates based on other reliable market data including market sales

volumes may be used in order to calculate the market share of the undertaking

concerned.

(2) The market shares shall be calculated on the basis of data of the year

previous to that of evaluation.

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(3) The market share belonging to the undertakings referred to in

subparagraph (d) of Article 1(3) on definitions shall be equally portioned to the

undertakings holding the rights and powers listed in subparagraph (a).

(4) If the market share is initially under the cover of the block exemption but

subsequently passes the threshold provided for in this Communiqué, the exemption

shall continue to apply until the end of the second year following the year in which the

threshold is first exceeded.

Application of the Communiqué to concerted practices and decisions of association of undertakings

ARTICLE 10 – (1) The provisions of this Communiqué shall apply to concerted practices between undertakings and decisions of association of undertakings to the

extend that it is appropriate.

Application of Article 6 of the Act

ARTICLE 11 – (1) The exemption granted according to the provisions of this Communiqué is without prejudice to the application of Article 6 of the Act No. 4054.

Entry into Force

ARTICLE 12 – (1) This Communiqué shall enter into force on the date it is published.

Execution

ARTICLE 13 – (1) The provisions of this Communiqué shall be executed by the President of the Competition Authority.