IP Antitrust Checklist: Restraint Classification, Misuse Screening, Pool Governance, and Enforcement Conduct Review

By Casey Scott McKay · 2025-03-08

This checklist reviews an intellectual property arrangement for competition exposure in the order the questions arise. It opens with relationship classification and an honest market power assessment, because those two steps resolve most of the analysis and everything downstream depends on them. It then screens the terms that carry real risk - conditions and packages, post-expiration payments, grantbacks, non-challenge covenants, and the hiring restraints that receive the least attention and carry the most exposure. It works pool formation and participation against the governance conditions, standards disclosure protocols, reportability screening for exclusive licences, and enforcement conduct discipline. It closes with the compliance programme, the retention schedule, and an investigation response sequence.

IP and Technology > General IP | Checklist | Published 8 March 2025 - Updated 14 June 2026 | Casey Scott McKay - marksy.us

Summary. This checklist reviews an intellectual property arrangement for competition exposure in the order the questions arise. It opens with relationship classification and an honest market power assessment, because those two steps resolve most of the analysis and everything downstream depends on them. It then screens the terms that carry real risk — conditions and packages, post-expiration payments, grantbacks, non-challenge covenants, and the hiring restraints that receive the least attention and carry the most exposure. It works pool formation and participation against the governance conditions, standards disclosure protocols, reportability screening for exclusive licences, and enforcement conduct discipline. It closes with the compliance programme, the retention schedule, and an investigation response sequence.

Keywords: IP antitrust checklist · restraint classification · horizontal screening · market power assessment · tying review · package licensing · Brulotte structuring · grantback review · non-challenge clauses · no-poach screening · pool governance · essentiality review · standards disclosure protocol · HSR reportability · demand letter discipline · pre-filing analysis · sham litigation defence · compliance term schedule · document retention · investigation response

How to use this checklist

| Phase | What it covers | |---|---| | 1 | Relationship classification | | 2 | Market power assessment | | 3 | Scope restraints | | 4 | Conditions and packages | | 5 | Post-expiration payments | | 6 | Grantbacks | | 7 | Non-challenge and validity | | 8 | Hiring restraints | | 9 | Cross-licences | | 10 | Settlements | | 11 | Pool formation | | 12 | Pool participation | | 13 | Standards participation | | 14 | Reportability | | 15 | Refusals to deal | | 16 | Enforcement conduct | | 17 | Demand letters | | 18 | Rule of reason record | | 19 | Compliance programme | | 20 | Retention and investigation |

Boxes marked [Gate] must clear before the agreement is signed, the pool is joined, or the assertion is sent.

The matter. A licensing programme reviewed after eleven years. The field restrictions were fine, the package was fine, and the exposure sat in two clauses nobody had read since the template was written: a mutual no-poach and an evergreen royalty.

Phase 1. Relationship classification

[ ] [Gate] Identify whether the counterparty is an actual competitor in any market.
- Why. Horizontal restraints on price, output, allocation, or hiring are per se unlawful regardless of the intellectual property involved.
- Trap. Classifying by the deal's label rather than the parties' businesses. A "supply agreement" between competitors is horizontal.
[ ] [Gate] Identify whether the counterparty is a potential competitor — capable of entering, or previously present.
- Why. Restraints that foreclose entry between potential competitors are analysed as horizontal.
- Trap. Treating "we don't compete today" as the answer.
[ ] Identify mixed relationships, where the parties are vertical in one dimension and horizontal in another.
[ ] Record the classification in writing, with the basis.
[ ] Classify each restraint: scope, price, exclusivity, ancillary, or condition.
[ ] [Gate] Route any agreement with an actual or potential competitor to specialist counsel before signature.
- Why. This single rule prevents most serious exposure.
- Trap. Exceptions for "routine" competitor deals, which is where the problems are.

Phase 2. Market power assessment

[ ] Define the relevant product market by reference to reasonable interchangeability, not by reference to the patent claims.
- Trap. Defining the market as the licensed technology, which hands the adversary a monopoly finding.
[ ] Define the geographic market.
[ ] Estimate share, and record the basis and the date.
[ ] Identify substitutes, including design-arounds and older technologies still in use.
[ ] Assess entry barriers and recent entry or exit.
[ ] Assess whether price could be raised without material volume loss.
[ ] Where the arrangement involves a platform serving two user groups, apply the single-market approach of Ohio v. American Express.
[ ] Where aftermarket power is asserted, assess information availability and switching costs under Eastman Kodak v. Image Technical Services.
[ ] [Gate] Prepare the assessment under privilege, directed by counsel.
- Why. It is the single most useful document in a competition file, and an unprivileged parallel version is discoverable and quotable.
- Trap. Business staff maintaining their own market analyses that contradict it.
[ ] Diary a review when share moves materially or a competitor exits.

Phase 3. Scope restraints

[ ] Confirm the field of use restriction corresponds to a technology field, not to a division of product markets between competitors.
[ ] Confirm territorial restrictions are within the right's scope and account for exhaustion on authorised sale.
[ ] Confirm customer restrictions are vertical, analysed under Continental T.V. v. GTE Sylvania.
[ ] Confirm quantity limits serve a stated purpose.
[ ] Confirm exclusivity duration and foreclosure share are proportionate to the investment being induced.
[ ] Record the procompetitive rationale for each restraint in a sentence.
- Why. National Collegiate Athletic Association v. Alston requires justifications to be proved, not recited.
- Trap. A rationale that takes a paragraph, which usually means there is none.
[ ] Consider and record the less restrictive alternatives that were rejected, and why.

Phase 4. Conditions and packages

[ ] Identify whether the licence conditions access to one right or product on taking another.
[ ] [Gate] Where a condition exists, confirm market power in the conditioning product.
- Why. Illinois Tool Works v. Independent Ink removed the presumption; without power there is no tying claim.
- Trap. Assuming power because the client holds a patent, which produces excessive caution about lawful terms.
[ ] Assess whether the products are separate — is there separate demand for the conditioned item?
[ ] For a portfolio licence, confirm individual patent or family licences are genuinely available.
[ ] Confirm the individual rates are priced so the choice is real rather than nominal.
[ ] Confirm licensees may remove patents they do not practise, with a stated adjustment.
[ ] Record evidence that some licensees have taken partial licences.
- Why. It converts a potential tie into a voluntary bundle and supports the efficiency justification.
- Trap. A published individual rate at ninety per cent of the package price, which is a condition with extra steps.
[ ] Document the efficiency rationale — transaction costs avoided, disputes avoided — with figures.
[ ] For a total sales royalty, confirm the licensee proposed or accepted it as a measurement convenience, and record that.
- Trap. Imposing it on a resisting licensee, which extends the patent to unpatented goods.
[ ] For consumables or parts conditions, assess whether an open specification achieves the same quality outcome.
[ ] Where a warranty is conditioned on approved supplies, confirm the condition is specification-based rather than source-based.

Phase 5. Post-expiration payments

[ ] List every licensed right and its expiry date, including patent term adjustment and terminal disclaimers.
[ ] Identify the last-to-expire date.
[ ] [Gate] Confirm no royalty obligation runs on post-expiration use of an expired patent.
- Why. Brulotte v. Thys, reaffirmed in Kimble v. Marvel Entertainment.
- Trap. The evergreen formulation — "royalties continue so long as licensee sells the products" — which is the precise defect.
[ ] Where post-expiration payment is commercially required, select a structure.
- Deferred payment for pre-expiration use, recited as a financing schedule.
- Run-off to the last-expiring patent in the family.
- Hybrid allocation with a stepped-down know-how rate at patent expiry.
- Foreign counterpart run-off with territory allocation.
- Lump sum payable in instalments.
[ ] [Gate] Where a hybrid is used, confirm the know-how is real, separately identified, and genuinely delivered.
- Trap. A nominal know-how recital attached to a patent-only transfer, which will not carry the stream.
[ ] Include the step-down schedule as an exhibit rather than in prose.
[ ] Include a savings clause reforming any over-long obligation to the maximum enforceable period.
[ ] Confirm trademark and copyright components, if any, are separately allocated.

Phase 6. Grantbacks

[ ] Confirm the grantback is non-exclusive.
[ ] Confirm it is limited to improvements to the licensed technology, not the licensee's whole portfolio.
[ ] Confirm it is limited to the licence's field.
[ ] Confirm the consideration is stated — royalty-bearing or royalty-free.
[ ] Confirm it does not extend to independently developed technology.
[ ] Confirm the definition of "improvement" is bounded and does not capture new inventions.
- Why. A narrow grantback preserves freedom to operate; a broad exclusive one transfers value and reduces the incentive to develop.
- Trap. Inheriting the clause from a template written for a different transaction, which is how broad grantbacks survive review.
[ ] For pool contributions, confirm the grantback reaches only essential patents.
[ ] Confirm assignment obligations, if any, are limited and not disguised as licences.

Phase 7. Non-challenge and validity

[ ] Identify any covenant not to challenge validity or enforceability.
[ ] [Gate] Replace a prospective prohibition with a termination right.
- Why. Non-challenge covenants are disfavoured because the public interest in eliminating invalid patents is strong; termination achieves most of the commercial purpose.
- Trap. Assuming the clause is enforceable because it was accepted.
[ ] Consider fee-shifting on unsuccessful challenges as an additional deterrent.
[ ] Confirm royalties continue during any challenge.
[ ] Distinguish settlement releases and covenants not to sue on identified patents, which are generally enforceable.
[ ] Confirm no term prevents the licensee from participating in administrative review proceedings, or assess the risk if it does.
[ ] Confirm no term requires the licensee to assist in enforcing the patent against others in a way that raises its own exposure.

Phase 8. Hiring restraints

[ ] [Gate] Identify every non-solicitation, no-hire, or wage-related term with a counterparty who is or could be a competitor.
- Why. Agreements between competitors not to hire each other's employees are labour market allocation, treated as per se unlawful and prosecuted criminally.
- Trap. This clause is drafted from precedent, receives no review, and carries the most serious exposure in the document.
[ ] Where a restraint is required, confirm it is ancillary: subordinate to a legitimate collaboration and reasonably necessary to it.
[ ] Limit it to employees who actually worked on the collaboration.
[ ] Limit it to the collaboration's duration plus a short defined tail.
[ ] Limit it to solicitation rather than hiring, so that responses to general advertisements are permitted.
[ ] Confirm no term addresses compensation levels for any employee group.
[ ] Confirm the restraint appears textually tied to the collaboration, so ancillarity is apparent on the face of the document.
[ ] Escalate any open-ended mutual hiring ban without exception.

Phase 9. Cross-licences

[ ] Confirm whether the parties compete, in which markets.
[ ] Check whether reciprocal field grants map onto product markets rather than technology fields.
- Trap. A cross-licence in which each party takes the field it already sells into is market allocation with a licensing label.
[ ] Check whether the arrangement forecloses either party from a market it would otherwise enter.
[ ] Confirm no term addresses prices, output, customers, or territories in the parties' product markets.
[ ] Confirm each party remains free to license third parties.
[ ] Recite the freedom-to-operate purpose and the disputes being resolved.
[ ] Document the patents each party actually needs, which supports the scope of the grants.
[ ] [Gate] Route to specialist counsel before signature.

Phase 10. Settlements

[ ] Identify whether value flows from the patentee to the alleged infringer.
[ ] Where it does, quantify it and identify what it purchases.
- Why. Federal Trade Commission v. Actavis subjects large and unexplained reverse payments to rule of reason scrutiny.
- Trap. Non-cash consideration — side supply deals, co-promotion — which receives the same scrutiny and is harder to value.
[ ] Confirm any payment is explained by documented avoided litigation costs or identified services.
[ ] Confirm the entry date is supported by the patent's remaining term and a contemporaneous merits assessment.
[ ] Retain that merits assessment.
[ ] Where multiple challengers are settled on similar terms, assess the aggregate effect.
[ ] Confirm the settlement does not restrict the challenger's conduct beyond the patents in suit.
[ ] Confirm no term allocates markets or customers between the parties.

Phase 11. Pool formation

[ ] [Gate] Engage an independent expert to review essentiality, retained by the pool rather than by contributors.
- Why. It is the condition that distinguishes aggregating necessary rights from aggregating competing ones, and it is what an agency asks about first.
- Trap. A review conducted by the contributors, which is not a check.
[ ] Publish the admission criteria and the review procedure.
[ ] Confirm admitted patents are complements — necessary to practise the technology — rather than substitutes for one another.
[ ] Confirm contributors retain the right to license bilaterally outside the pool.
[ ] Confirm the pool licence is available to any implementer on published terms.
[ ] Confirm rates are published and applied without discrimination.
[ ] Establish information barriers so pool administration does not become a competitor forum.
[ ] Confirm any grantback is narrow, non-exclusive, and limited to essential patents.
[ ] Vest governance in an administrator with defined authority rather than in a contributors' rate-setting committee.
[ ] Establish periodic re-review, because patents expire and claims are amended.
[ ] Document the procompetitive rationale — stacking eliminated, blocking positions resolved, transaction costs reduced.
[ ] Consider whether the analogue in Broadcast Music v. Columbia Broadcasting System supports the structure, and record why.

Phase 12. Pool participation

As a contributor.

[ ] Compare the client's patents against the admission criteria before submission.
[ ] Compare the contribution against the average, since per-patent revenue sharing subsidises weaker portfolios.
[ ] [Gate] Read the grantback obligation in full and assess what it captures.
[ ] Confirm the bilateral licensing right survives, in writing.
[ ] Understand withdrawal terms and whether granted licences survive withdrawal.
[ ] Understand how essentiality disputes are resolved and who bears the cost.
[ ] Confirm what information the pool shares among contributors.
[ ] Assess whether pool membership affects existing bilateral licences.

As a licensee.

[ ] Confirm what the pool licence actually clears, and identify essential patents outside it.
[ ] Confirm rates, non-discrimination, and the audit provisions.
[ ] Assess whether taking the licence affects the ability to challenge individual patents.
[ ] Confirm coverage of affiliates, suppliers, and customers.
[ ] Treat the pool licence as partial clearance, not as an opinion.

Phase 13. Standards participation

[ ] Register who attends on the client's behalf.
[ ] Obtain and read the organisation's intellectual property policy literally.
[ ] Determine whether the policy requires a patent search, disclosure of known patents, or both.
[ ] Determine whether obligations bind affiliates.
[ ] Where a search is required, conduct it and document the scope.
[ ] [Gate] Disclose promptly, before adoption rather than after.
- Why. Late disclosure followed by assertion is the ambush fact pattern, reachable under 15 U.S.C. § 45.
- Trap. Treating disclosure as a formality delegated to an engineer with no record kept.
[ ] Confirm whether licensing declarations bind successors and run with the patent.
[ ] Brief participants on prohibited discussion topics — prices, output, customers, allocation.
- Why. Standards meetings are meetings of competitors, and Allied Tube & Conduit v. Indian Head removes immunity where the process is captured.
[ ] Confirm no procedural conduct is directed at excluding a competing technology rather than at technical merit.
[ ] Retain attendance records, disclosures, searches, and declarations.
[ ] On acquiring a portfolio, confirm what standards commitments transfer with it.

Phase 14. Reportability

[ ] [Gate] Screen every exclusive licence at term sheet stage, not at signing.
[ ] Ask whether the grant is exclusive, including as against the licensor.
[ ] Ask whether it transfers all commercially significant rights in a defined field, including the right to sue.
[ ] Ask whether the value exceeds the current threshold.
- Why. Exclusive field licences are treated as asset acquisitions under 15 U.S.C. § 18a.
- Trap. Assuming licences are never reportable, which is the most common and most expensive error in this phase.
[ ] For portfolio acquisitions, assess whether the acquired patents read on the acquirer's competitors.
[ ] Assess whether the acquisition removes a competitive constraint under 15 U.S.C. § 18.
[ ] For transfers to an assertion entity, document the business rationale contemporaneously.
[ ] For defensive aggregation among implementers, establish membership criteria, licensing terms available to all, and information limits.

Phase 15. Refusals to deal

[ ] Confirm that a unilateral refusal to license is the default position and is protected.
- Why. 35 U.S.C. § 271 excludes refusal from misuse, and Verizon Communications v. Trinko rejects a general duty to deal.
[ ] Identify whether the refusal terminates an existing profitable course of dealing.
- Why. That is the Aspen Skiing v. Aspen Highlands Skiing fact pattern, at the outer boundary of liability.
[ ] Confirm the stated business reason is the actual reason, and record it.
- Trap. A pretextual intellectual property justification, which Image Technical Services v. Eastman Kodak treats as rebuttable.
[ ] Confirm the policy is applied consistently across similarly situated requesters.
[ ] Confirm no communications describe the purpose as disadvantaging a specific competitor.
[ ] Where the client licenses at one supply chain level and not another, record the operational rationale. See Federal Trade Commission v. Qualcomm.
[ ] Where a FRAND commitment exists, treat the refusal analysis as governed by that commitment rather than by general principles.

Phase 16. Enforcement conduct

[ ] [Gate] Complete a documented pre-filing analysis before any assertion.
- Why. It defeats both exposures — the objective prong of Professional Real Estate Investors v. Columbia Pictures and the fraud element of Walker Process Equipment v. Food Machinery.
- Trap. Reconstructing it after a counterclaim, which is worth very little.
[ ] Prepare claim charts mapping asserted claims to each accused product.
[ ] Prepare a validity assessment covering known prior art.
[ ] Confirm standing and the recorded chain of title.
[ ] Where prosecution raised any candour question, assess it against 37 C.F.R. § 1.56.
[ ] Keep the analysis under privilege, directed by counsel.
[ ] Confirm the enforcement policy is applied across similarly situated targets.
- Trap. Selective enforcement against a single competitor, which supports the inference that the purpose is competitive rather than protective.
[ ] Where the programme targets a competitor's customers, confirm the underlying claims are strong.
[ ] Confirm no public statement asserts infringement as established fact.
- Why. Objectively false statements about a competitor's products are actionable under 15 U.S.C. § 1125.
[ ] Where defending, test any sham or fraud counterclaim against the objective prong and the clear-and-convincing standard at the pleading stage.

Phase 17. Demand letters

[ ] Identify the patent, the asserted claims, and the accused product or functionality.
[ ] Establish notice under 35 U.S.C. § 287 where marking is incomplete.
[ ] Draft to the strictest applicable state bad-faith assertion statute as a matter of course. See state bad faith patent assertion statutes.
[ ] Avoid statements about litigation outcomes or about the recipient's business generally.
[ ] Assess declaratory judgment exposure before sending. See MedImmune v. Genentech.
- Trap. A specific letter that creates jurisdiction in the recipient's chosen forum, trading notice for venue.
[ ] Route every letter through a single approver.
[ ] Retain every letter in final sent form.
[ ] Diary responses and ensure follow-through is consistent with the stated position.

Phase 18. Rule of reason record

[ ] For each restraint, state the anticompetitive effect a plaintiff would allege.
[ ] State the procompetitive justification, with supporting evidence rather than assertion.
- Why. National Collegiate Athletic Association v. Alston requires proof.
[ ] Quantify the justification where possible — investment induced, costs saved, free-riding prevented.
[ ] Identify less restrictive alternatives considered and record why each was rejected.
- Why. This is where rule of reason cases are decided, and it is a drafting question before it is a litigation question.
[ ] Confirm the restraint's duration is no longer than the justification requires.
[ ] Confirm its breadth and geographic scope are similarly proportionate.
- Trap. Restraints fail on over-breadth far more often than on concept.
[ ] Where the restraint is ancillary to a collaboration, confirm it is textually tied to that collaboration's scope, duration, and personnel.
[ ] Date the record and retain it with the executed agreement.

Phase 19. Compliance programme

[ ] Identify who negotiates licences, attends standards meetings, or communicates with competitors.
[ ] Publish the escalation rule in one line: any agreement with an actual or potential competitor goes to counsel before signature.
[ ] Publish a term schedule classifying common terms.
- Routine: non-exclusive licences, field and territory restrictions in vertical deals, running royalties during the term, ordinary confidentiality.
- Review required: exclusivity, packages, grantbacks, most-favoured-nation clauses, non-challenge provisions, post-expiration structures, exclusive licences of substantial assets.
- Prohibited without specialist sign-off: any price, output, customer, or territory term affecting a competitor's product market; any hiring restraint with a competitor; any settlement involving payment from patentee to challenger.
[ ] Train business staff on recognising the three or four situations that require a call, not on doctrine.
[ ] Teach people to state procompetitive purposes accurately in writing.
- Trap. Advising staff to write nothing, which produces silence that reads badly and leaves the justification unevidenced.
[ ] Establish the standards protocol: attendance, disclosure, prohibited topics, records.
[ ] Establish the enforcement protocol: no assertion without documented analysis, a template letter, a single approver.
[ ] Structure competition analysis to be privileged, and prevent parallel unprivileged assessments. See What Your Adversary Gets to Read.
[ ] Audit a sample of executed agreements annually against the term schedule.
- Why. The gap between policy and practice is what an investigation finds.
[ ] Reassess the programme when share moves materially, a competitor exits, or a substantial portfolio is acquired.

Phase 20. Retention and investigation

Retention.

[ ] The market assessment, dated, privileged, and updated on a schedule.
[ ] The efficiency rationale for any package, with the individual price list.
[ ] Evidence that licensees have taken individual licences.
[ ] The allocation analysis behind any hybrid or post-expiration structure.
[ ] Pool admission materials, essentiality reviews, and the executed grantback.
[ ] Standards attendance records, disclosures, searches, and declarations.
[ ] Reportability assessments for exclusive licences and acquisitions.
[ ] Pre-filing analyses and claim charts for every assertion.
[ ] Sent demand letters in final form.
[ ] Training records and the term schedule as published.
[ ] Board and management materials describing the programme's purpose.
[ ] The rule of reason record for each reviewed restraint.

On an investigation, second request, or complaint.

[ ] Issue a litigation hold covering licensing files, standards records, market assessments, pricing decisions, and competitor communications.
[ ] Suspend routine destruction, including on chat and messaging platforms.
- Trap. Messaging platforms with automatic deletion, which is where preservation failures occur.
[ ] Identify custodians: licensing, business development, standards participants, senior commercial management.
[ ] Engage specialist counsel before responding to anything.
[ ] Locate the privileged market assessment and confirm no unprivileged parallel version exists.
[ ] Prepare witnesses on the procompetitive rationale for each restraint and on what they actually knew.
- Trap. A witness who cannot say why a term exists, which creates a record suggesting it has no legitimate purpose.
[ ] Assume anything produced becomes available in follow-on treble damages litigation under 15 U.S.C. § 15.
[ ] Check the insurance tower early; most policies exclude antitrust.
[ ] Treat any decision to amend agreements mid-investigation as one for specialist counsel, not as a unilateral compliance response.

Phase 21. Cadence

[ ] Per deal. Classification, restraint screen, and the rule of reason record.
[ ] Per quarter. Sample review of executed agreements against the term schedule.
[ ] Per year. Market assessment refresh; training; standards protocol review; audit.
[ ] On event. Share movement, competitor exit, portfolio acquisition, pool invitation, new enforcement programme, or receipt of any competition inquiry.
[ ] On template change. Re-screen the grantback, non-challenge, and hiring clauses specifically, because template drift is how old defects propagate.

Phase 24. If you can only do four things

[ ] Route competitor agreements to counsel. One rule, no exceptions, and it prevents the exposure that actually matters.
[ ] Write the market assessment. Privileged, dated, honest, and refreshed. It resolves most questions and it is the document that wins arguments.
[ ] Read the grantback and the hiring clause. They are the two terms drafted from precedent that carry real risk, and they receive the least attention.
[ ] Document the pre-filing analysis before asserting. It is cheap, it is privileged, and its absence is what a counterclaim is built on.

Phase 25. Working with other advisers

[ ] Specialist competition counsel. Engaged for competitor agreements, pool formation, reportability, and any inquiry. Brief them with the classification and the market assessment rather than the whole file.
[ ] Patent prosecution counsel. Consulted where a candour question exists, because prosecution conduct becomes a Walker Process element and prosecution counsel becomes a witness.
[ ] Economists. Engaged early for market definition where share is genuinely contested, and engaged under privilege.
[ ] Foreign counsel. Engaged where the arrangement operates in Europe or other systems whose treatment of exclusivity, non-challenge, and post-expiration terms differs materially.
- Trap. Assuming the US analysis travels, which surfaces years later during a transaction review.
[ ] Insurance brokers. Consulted on whether any coverage responds to competition claims, which is usually no.
[ ] Business leadership. Briefed on the escalation rule and on why it exists, because a rule the commercial team resents is a rule that gets bypassed.

Phase 26. Metrics

[ ] Percentage of executed agreements with a completed classification.
[ ] Percentage with a rule of reason record where a review-required term is present.
[ ] Age of the current market assessment.
[ ] Number of competitor agreements routed to counsel, against the number signed.
[ ] Number of exclusive licences screened for reportability at term sheet.
[ ] Number of assertions sent with a completed pre-filing analysis, against total sent.
[ ] Standards disclosures made, against meetings attended.
[ ] Audit findings per sample, and time to remediation.
[ ] Training completion by the population that negotiates.
[ ] The one that matters. Whether any agreement signed in the period contains a term from the prohibited bucket. The target is zero, and any non-zero result is a programme failure rather than a drafting error.

Phase 22. The one-page position

Arrangement — [counterparty], [date]. Relationship: [vertical / horizontal / mixed]; competitor status [actual / potential / none], basis [description]. Market: [definition]; share [estimate], dated [date]; substitutes [list]; entry [assessment]; power conclusion [yes/no]. Restraints: scope [list]; exclusivity [terms, duration, foreclosure share]; conditions [list]; ancillary [grantback / non-challenge / hiring]. Tying screen: separate products [yes/no]; power [yes/no]; individual licences offered [yes/no]; partial licences taken [N]. Post-expiration: last expiry [date]; structure [deferred / run-off / hybrid / foreign / lump sum]; allocation basis [description]. Grantback: [non-exclusive / exclusive]; scope [improvements in field / broader]; assessment [acceptable / renegotiate]. Non-challenge: [prohibition / termination right / none]. Hiring restraint: [none / ancillary, scope]; assessment [clear / escalate]. Pool: [n/a / contributor / licensee]; essentiality review [independent / contributor-run]; bilateral right [preserved / not]. Standards: [n/a / participant]; disclosures [dates]; declarations [terms]. Reportability: [screened, date]; conclusion [reportable / not], basis [description]. Enforcement: pre-filing analysis [date]; claim charts [N]; letters approved by [name]; consistency [confirmed]. Rule of reason record: justification [statement]; evidence [list]; alternatives rejected [list, reasons]. Overall: [proceed / proceed with amendments / escalate], recommended amendments [list].

Phase 23. What this costs

[ ] A restraint screen on an ordinary vertical licence takes an hour by someone who knows the sequence.
[ ] A market assessment takes two to five days the first time and half a day to refresh.
[ ] Pool contribution diligence takes a week, most of it reading the grantback and comparing the portfolio.
[ ] A standards protocol takes a day to write and a morning a year to maintain.
[ ] Reportability screening at term sheet takes an hour; discovering it at signing costs weeks and a filing fee.
[ ] A pre-filing analysis takes days per patent and is the cheapest insurance in the file.
[ ] Responding to a civil investigative demand costs more than the licensing programme earns in most years.
[ ] Private treble damages litigation under 15 U.S.C. § 15 costs more again, and is usually uninsured.
[ ] The asymmetry is the argument. A term producing marginal revenue and material exposure should be dropped, and that calculation is made too rarely.
[ ] Reserve the deep analysis for genuine problems, which is what makes the programme workable rather than obstructive.

Outcome. The eleven-year review took two weeks. The field restrictions, the package, and the exclusivity all survived unchanged, and the market assessment showed a twenty-two per cent share against three substitutes, which resolved the tying question that had worried the business for years. Two clauses did not survive. The mutual no-poach with a joint development partner — a competitor — was terminated immediately and the collaboration's non-solicitation redrafted to project personnel for the project term. The evergreen royalty, which had been running past the flagship patent's expiry for nineteen months, was restructured under Kimble v. Marvel Entertainment as deferred consideration for pre-expiration use, with a genuine know-how component identified and delivered. A grantback inherited from a template was narrowed to non-exclusive improvements in field. The programme was published as a term schedule, the escalation rule went out in one line, and the standards participants were briefed for the first time. Nothing about the business changed. The exposure that had been sitting in the file for a decade did.

Key Authorities at a Glance

| Authority | Proposition | |---|---| | 15 U.S.C. § 1 | Restraints of trade | | 15 U.S.C. § 2 | Monopolisation | | 15 U.S.C. § 14 | Tying; exclusive dealing | | 15 U.S.C. § 15 | Treble damages | | 15 U.S.C. § 18 | Acquisitions | | 15 U.S.C. § 18a | Premerger notification | | 15 U.S.C. § 45 | Unfair methods of competition | | 15 U.S.C. § 1125 | False statements in commerce | | 35 U.S.C. § 271 | Misuse limits at subsection (d) | | 35 U.S.C. § 287 | Marking and notice | | 37 C.F.R. § 1.56 | Duty of candour | | Illinois Tool Works v. Independent Ink | No presumed market power | | Eastman Kodak v. Image Technical Services | Aftermarket power | | Brulotte v. Thys | Post-expiration royalties | | Kimble v. Marvel Entertainment | Permitted structures | | Morton Salt v. G.S. Suppiger | Misuse | | Princo v. International Trade Commission | Misuse narrowed | | Verizon Communications v. Trinko | No general duty to deal | | Aspen Skiing v. Aspen Highlands Skiing | The narrow exception | | In re Independent Service Organizations | Refusal generally immune | | Broadcast Music v. Columbia Broadcasting System | Blanket licences | | Continental T.V. v. GTE Sylvania | Vertical non-price restraints | | Leegin Creative Leather Products v. PSKS | Resale price maintenance | | National Collegiate Athletic Association v. Alston | Justifications must be proved | | Ohio v. American Express | Two-sided markets | | Walker Process Equipment v. Food Machinery | Fraudulent procurement | | Professional Real Estate Investors v. Columbia Pictures | Sham litigation | | Eastern Railroad Presidents Conference v. Noerr Motor Freight | Petitioning immunity | | Allied Tube & Conduit v. Indian Head | Standard-setting capture | | Federal Trade Commission v. Actavis | Reverse payments | | Federal Trade Commission v. Qualcomm | Licensing level | | Antitrust guidelines for the licensing of intellectual property | Agency framework |

The five things people get wrong

One. They assume the patent settles the question, in one direction or the other. It confers a right to exclude and nothing more. It supplies neither market power nor immunity, and Illinois Tool Works v. Independent Ink and Princo make both halves of that clear.

Two. They define the market as the technology. A patent covering one of four ways to achieve a result does not create a market of one, and a narrow definition prepared internally becomes the adversary's exhibit.

Three. They fight Brulotte instead of drafting around it. Kimble sets out the permitted structures expressly, and the licence that ignores them loses the entire post-expiration stream rather than restructuring it.

Four. They never read the hiring clause. A mutual non-solicitation with a competitor is labour market allocation, treated as per se unlawful and prosecuted criminally, and it is drafted from precedent with no review.

Five. They assert without a documented pre-filing analysis. Its absence is the first fact a sham counterclaim relies on, and its presence defeats the objective prong of Professional Real Estate Investors v. Columbia Pictures at the threshold.