Journal Article

Licensee estoppel: an overview of the position under English and European law

Matthew Jones

in Journal of Intellectual Property Law & Practice

Volume 2, issue 11, pages 750-755
Published in print November 2007 | ISSN: 1747-1532
Published online September 2007 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpm165
Licensee estoppel: an overview of the position under English and European law

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Legal content

This article intends to raise awareness of the English law doctrine of licensee estoppel and how it may be relevant in practice. The relevant English case law and its relationship with English statute and European legislation are discussed.

Key points

Many practitioners are unaware of the nature and significance of licensee estoppel under English law. The doctrine of licensee estoppel seems at first sight to run contrary to European competition law: this situation is made more complicated by the fact that European legislation and case law seems to presume that such a doctrine does not exist. Once the doctrine itself and its relationship with European competition law have been explained, the remedies that are available and commercially relevant to licensees become clearer.

Practical significance

These considerations are relevant to practitioners drafting and negotiating technology transfer agreements under English law, as well as to those advising licensors and licensees on their rights and available remedies.

Keywords: Where an IP right is licensed by contract to a licensee, may he subsequently challenge the validity of that right and may the owner of that right impose a duty upon him not to do so? This is an important issue in practice but one which is quite neglected by case law.; The significance of this issue is not confined to IP law alone, since the extent to which a licensor may use licences as a means of protecting the integrity of his intellectual assets has substantial repercussions for competition law too.; In this article, the author reviews provisions of English and European Union law that may be brought to bear when analysing this issue from a legal and strategic perspective, paying particular attention to patent law.

Journal Article.  4235 words. 

Subjects: Arbitration ; Intellectual Property Law

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