Advocate General Wathelet concludes that payment of royalties under a licence agreement where the patent was held invalid may be compatible with Article 101 TFEU (Genentech / Hoechst)

On 17 March 2016, Advocate General Wathelet issued his opinion on a request for a preliminary ruling from the Paris Court of Appeal, which inquired as to whether Article 101 TFEU precludes a licensee from paying royalties pursuant to a licensing agreement when the patent, which is the subject of that licensing agreement, has been held invalid (C-567/14, Genentech Inc. v Hoechst GmbH). The underlying proceedings involve a long-running patent dispute between Behringwerke, the licensor (of which Sano-Aventis Deutschland, a subsidiary of Hoechst, is a successor) and Genentech Inc. (“Genentech”), the licensee, a subsidiary of Roche. The origin of the dispute lies in a licence agreement signed in 1992 granting the licensee a world-wide non-exclusive licence for the use of a patented substance