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The ETSI IPR Policy

Successfully addressing the new challenges

Dr. Michael FröhlichLegal Affairs Director Attorney-at-law

Copyright © 2008. All rights reserved.GSC IPR Workshop: GSC13-IPR-12GSC-13 Boston, 14-17 July 2008

GSC IPR WorkshopGSC-13 Boston, 14-17 July 2008

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World Class Standards

Dr. Michael FröhlichETSI Legal Affairs Director

Table of content

A. Introduction

B. Topics under critical scrutiny

1) Disclosure and FRAND licensing declaration with regard to Patent Families

2) Improvements to the ETSI IPR Database

3) Revision of IPR Licensing Declaration forms

4) Examination of Competition/antitrust law issues in standardization process

5) Development of documentation rules facilitating the work of PTO’s

6) Irrevocability of FRAND licensing declaration

7) Assignment of a Patent that is subject to a FRAND licensing declaration

C. Conclusion


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A. Introduction

B. Topics under critical scrutiny1) Disclosure and FRAND licensing declaration with regard to Patent

Families







C. Conclusion


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Main characteristics of ETSI IPR Policy (refresher)

No technical reservation for the inclusion of IPRs in standards

Early identification and disclosure of essential IPRs

Ensuring the future applicability of the standards in full respect of the rights of the IPR owner by requesting FRAND licensing declaration

Holders of essential IPRs are entitled (but not required) to make voluntary, unilateral, public ex ante disclosures of licensing terms for the sole purpose of assisting members in making informed, unilateral and independent decisions in relation to whether solutions best meet the technical objectives

No involvement of ETSI in any commercial discussion on IPR matters (i.e. terms and conditions of the licenses to be determined by the parties of the agreement)


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ETSI IPR Special Committee (IPR SC)

In 2006 ETSI IPR Review ad hoc group (IPR R AHG) recommended to the ETSI General Assembley the creation of a permanent IPR Special Committee (IPR SC)

ToR of IPR SC: IPR SC under the responsability of the GA functions are purely consultative to provide advice with regard to IPR related issues when requested to assess, elaborate and propose necessary changes to the IPR Policy and

IPR Guide resulting from requests from the Director-General, General Assembly, and ETSI Board, as appropriate

IPR SC shall not be active on a regular basis but shall be activated in cases where the Chairman finds that urgent

IPR SC shall make use of electronic document handling tools and electronic meeting facilities to the best extent possible

Karsten Meinhold (Nokia Siemens Networks) has been appointed as Chairman by the IPR SC and the IPR SC elected Serena Tierney (Telefonica Europe plc) as Vice-Chairman


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Activation of the IPR SC IPR SC activated December 2007 in order to discuss several pending

items, to find solutions for them and give advice on how to handle them.

Topics under critical scrutiny are: Disclosure and IPR undertaking/licensing declarations with regard to Patent

Families Improvements to the ETSI IPR Database Revision of IPR Licensing Declaration forms Examination of Competition/antitrust law issues in standardization process Irrevocability of IPR undertaking/licensing declarations Continuity of IPR undertaking/licensing declaration when ownership of a

Patent that is subject to such undertaking/licensing is transferred

4 meetings held already; 50-60 participants/meeting

Meeting #5 scheduled on 23-25 Sept ‘08

Decisions made so far are all based on consensus


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A. Introduction

B. Topics under critical scrutiny1) Disclosure and FRAND licensing declaration with regard to

Patent Families







C. Conclusion


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Patent Families

Need has been identified to modify/clarify ETSI procedures and guidelines to further address patent family information

unclear, if obligation to disclose is requiring the identification of all essential IPRs (i.e. including all members of a patent family) or if disclosure of an essential IPR is sufficient (i.e. one family member)

also implication for FRAND licensing declaration are unclear

notion of Patent Family is unclear, and requirements as to how information on Patent Family has to be provided are missing

Recommendation of the IPR SC (to be endorsed by GA#52 – 25/26 Nov ’08):


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Definition

New Clause 15.13 ETSI IPR Policy:

“PATENT FAMILY” shall mean all the documents having at least one priority in common, including the priority document(s) themselves. For the avoidance of doubt, “documents” refers to patents, utility models, and applications therefor.”

Family P1 Family P2 Family P3

Document D1 Priority P1

Document D2 Priority P1 Priority P2



Document D5 Priority P3


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Disclosure

Obligation is met with the disclosure of one member of a patent family. Disclosure of other patent members is voluntary


“The obligations pursuant to Clause 4.1 above are deemed to be fulfilled in respect of all existing and future members of a PATENT FAMILY if ETSI has been informed of a member of this PATENT FAMILY in a timely fashion. Information on other members of this PATENT FAMILY, if any, may be voluntarily provided.”


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FRAND licensing declaration

Presumption that a FRAND licensing declaration with regard to one disclosed member of a patent family extents to all existing and future members of that patent family

IPR holders have the possibility to specify upfront (i.e. at the time the FRAND licensing declaration is made) which members of the patent family are excluded from the FRAND-commitment


“An undertaking pursuant to Clause 6.1 with regard to a specified member of a PATENT FAMILY shall apply to all existing and future ESSENTIAL IPRs of that PATENT FAMILY unless there is an explicit written exclusion of specified IPRs at the time the undertaking is made. The extent of any such exclusion shall be limited to those explicitly specified IPRs.”


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Consequences of upfront exclusion

Clause 8 ETSI IPR Policy to be initiated in all cases of refusal regardless of appurtenance to patent family

Modified Section 2.4.2 ETSI Guide on IPRs:

“Where an the IPR undertaking/licensing declaration as provided in Clause 6 of the ETSI IPR Policy cannot be obtained because of the refusal by the essential IPR owner, the ETSI Secretariat is obliged to initiate the procedure set out in Clause 8 of the ETSI IPR Policy. For the avoidance of doubt with regard to PATENT FAMILIES, the ETSI Secretariat is obliged to initiate a procedure of Clause 8 of the ETSI IPR Policy in every case where the IPR owner refuses to give the IPR undertaking/licensing declaration as provided in Clause 6 of the ETSI IPR Policy for at least one member of a PATENT FAMILY regardless of the fact that the IPR owner might have given such IPR undertaking/licensing declaration for other members of the same PATENT FAMILY.”


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Other clarifications

New Section 2.1.2 ETSI Guide on IPRs:

“The deemed fulfilment in Clause 4.3 of the IPR Policy of the obligations pursuant to Clause 4.1 in respect of all existing and future members of a PATENT FAMILY is only applicable to the extent that the IPR owner has the right to make the IPR undertaking/licensing declaration pursuant to Clause 6.1 of the ETSI IPR Policy as to members of the PATENT FAMILY at the date of the IPR information statement and licensing declaration.

For the purpose of the disclosure made under Clause 4, the patent owner may consider any part of an IPR document, in particular the description, the claims and the drawings.”


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(i.) DisclosureLet’s say there will be 5 patents (all being part of one patent family)

IPRowner

D1

D2D3 D4

D5

Disclosure(Clause 4.1 IPR Policy)

Essential

Essential

3rd party IPR

Essential

With disclosure of D1 the requirement to inform ETSI of essential IPR in a timely fashion is deemed to be fulfilled.

Essential, but not yet applied for


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(ii.) IPR undertaking/licensing declarationLet’s say there are 5 patents (all being part of one patent family)

IPRowner

D1

D2D3 D4

D5


Essential

Essential

FRAND

FRAND FRAND

ETSIRequest FRAND-undertaking

Yes, give FRAND-undertaking


Essential

FRAND

3rd party IPR


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IPRowner

D1

D2D3 D4

D5


Essential

Essential

FRAND

FRAND


No FRAND-undertaking


FRAND

Essential

FRAND

3rd party IPR


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IPRowner

D1

D2D3 D4

D5


Essential

Essential

FRAND

FRAND

ETSI

No FRAND-undertaking


FRAND

Essential Essential

FRAND

3rd party IPR


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IPRowner

D1

D2D3 D4

D5


Essential

Essential

FRAND

FRAND


No

FR

AN

D-

un

dertakin

g


FRAND

Essential

FRAND

FRAND-undertaking

3rd party IPR


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IPRowner

D1

D2D3 D4

D5


Essential

Essential

FRAND

FRAND



FRAND

Essential

FRAND

3rd party IPR


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A. Introduction


Families







C. Conclusion


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Improvements to the ETSI IPR Database Matter is linked to Patent Family issue

Recommendation of the IPR SC (endorsed by GA#51 – 26-28 Mar ’08):

to provide the funding necessary to restructure the ETSI IPR Database

Database Expert Group has been created to support the further development of a restructured IPR Database

Requirements:

Professional analysis of the data model of the ETSI IPR database

IPR declarations of ETSI members and updates to be scanned and stored in the database as pdf-files (or a similar format)


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Improvements to the ETSI IPR Database Requirements (cont’d):

history concept where every change is documented and traceable

complete database to be provided for download

supporting definition of private search criteria

downloadable in such a manner that it replaces an existing older download of the database without destroying private search criteria

Possibility to check the up-to-dateness of entries and patent family information with help of the official patent registers at PTO’s (e.g. provision of a link from entry in ETSI IPR Databse to the related entry in the official patent database of EPO)

migration of existing data to restructured database without loss of information

further co-operation with EPO should be investigated.


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A. Introduction


Families







C. Conclusion


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IPR Licensing Declaration forms Making the use of the IPR Licensing Declaration forms mandatory

Current situation:

ETSI disposes of two forms which can be used by IPR owners to make declarations to ETSI (General IPR licensing declarations and IPR Information statements and licensing declarations)

The use of the forms is not mandatory at present

increase of cases where the wording of the forms has been modified by declarants

amendment are suitable to hamper the reliability of the declarations and affects legal certainty, as even slight amendments may have far-reaching effects.

impossibility to review the wording of every declaration


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IPR Licensing Declaration forms IPR SC found that a pre-requisition for a decision whether to

make the use of the forms mandatory or not, is an improvement of the format and the content of the forms, which should be aligned with the language of the ETSI IPR Policy

ETSI SEC tabled a proposal which received wide support, but consensus could not yet being achieved

Topic to be further discussed at Meeting#5 – 23-25 Sept ‘08


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A. Introduction


Families






C. Conclusion


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Examination of competition law issues

What are the issues regarding competition/antitrust law (if any) affecting ETSI and ETSI Members that may arise in a standardization process where a Member notifies the organization of a suspected future anti-competitive practice by another Member? What should an SDO do in a situation where it is confronted with the allegation

that licensing terms that have been disclosed ex-ante may not be FRAND

Can one distinguish between commercial discussions on IPR matters that are not allowed in ETSI and raising antitrust concerns in a Technical Body with subsequent evaluation of any such concerns

After intensive discussions IPR SC was not able to reach a consensus on the matter and decided to ask for an external legal opinion


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Examination of competition law issues

External counsel has been carefully selected and mandated with a legal opinion on the question whether there is need to modify any of ETSI’s procedures or policies to address possible anti-competitive conduct

Expert opinion indicated that "... there is no need to modify any of ETSI’s procedures or policies to address possible anti-competitive conduct ...”, but consensus on this opinion was not reached within the IPR SC.

Recommendation of the IPR SC (endorsed by GA#51 – 26-28 Mar ’08): to note that the subject of handling antitrust issues is closed until

new issues are tabled


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A. Introduction


Families







C. Conclusion


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Development of documentation rules

New technological developments are not only discussed within SDO’s, but are in parallel also subject to patent applications

Cooperation between PTO’s and SDO’s is a win-win situation PTO’s increase the quality of granted patents SDO’s reduces risk of IPR problems linked to unduly granted patents

Resolution GSC-12/23 (IPR WG) on the cooperation with PTO’s

ETSI and the EPO have established a close cooperation


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Development of documentation rules

Electronic searchability becomes increasingly important for PTO

To allow better examination documentation needs to contain information on bibliographic data such as effective publication date, working group, date and place of meeting, author or editor

Develop documentation rules that lead to a documentation easily searchable in its entirety

Recommendation from IPR SC (to be endorsed by GA#52 - 25/26 Nov ‘08) ETSI Secretariat to prepare a meeting document template for use by ETSI

Technical Bodies and WGs ETSI Board to update the Technical Working Procedures (TWP) to enforce the

use of this template by the TBs. ETSI to draw the attention of other related SSOs with which ETSI has

established links/contacts (e.g. through the GSC) on the importance of the matter and to share information


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A. Introduction


Families







C. Conclusion


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Irrevocability of FRAND licensing declaration

Continued availability of FRAND licensing declarations is key FRAND licensing declaration fails to serve purpose if it can be

revoked at a later point

Recommendation from IPR SC (to be endorsed by GA#52 - 25/26 Nov ‘08):

To insert clarifying language, i.e. the word "irrevocable“, in Clause 6.1 of the ETSI IPR Policy as follows:

"When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner to give within three months an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions under such IPR to at least the following extent: ..."


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A. Introduction


Families







C. Conclusion


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Assignment of a patent

N-Data Solutions (FTC No. 051 0094 (Jan. 2008)

Transfer of an IPR should not be used to circumvent a FRAND licensing declaration

Support for the principle but yet no common agreement on how to implement it

Topic to be further discussed at Meeting#5 – 23-25 Sept ‘08


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A. Introduction


Families







C. Conclusion


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Conclusion

ETSI IPR Policy is a key element for the success of ETSI’s globally-applicable standards

fair balance of all the interests involved

allowing Members to fully reserve their IPRs is an incentive for high technology companies to participate in the standardization process enabling ETSI to draft excellent and high-quality standards

ETSI is effectiveliy facing the new challenges

ETSI will continue to lead the debate on IPRs and Standards

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Thank you for listening

Dr. Michael Fröhlich, D.E.ALegal Affairs Director

[email protected]

+33 (0)4 92 94 42 60


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