Explaining the Use of the Grant-Back Clause in Technology Licensing

Abstract

Licensing is one of the most commonly observed inter-firm contractual agreements. Drawing on the resource-based view of the firm and contract economics, we argue that the inclusion of a grant-back clause in licensing agreements emerges as a consequence of the licensor and licensee firms' requirements to balance the need to protect their technological resources with the need to learn through internal and external processes. We argue that licensing agreements are increasingly likely to contain a grant-back clause (i) the closer the licensed technology is to the core of the licensor's patent portfolio, and (ii) the higher the uncertainty of the licensed technology. In contrast, we conjecture decreasing likelihood of a grant-back clause, the closer the licensed technology is to the core of the licensee's patent portfolio. Technological uncertainty is conjectured to positively moderate the results both when the licensed technology is part of the core technology of the licensee and the licensor. We test our hypotheses using a sample of 404 licensed technologies over the period 1984-2004. We employ a hierarchical nested decision model to account for the inclusion of a grant-back clause in a licensing contract nested in the decision about which technologies to license out. We find broad support for our theoretical arguments.