Presentation on theme: "Geneva, Oct 9, 2012 ATIS Intellectual Property Rights Activities 2012 – An Update Thomas Goode General Counsel, ATIS Document No: GSC16bis-IPR-08 Source:"— Presentation transcript:
Geneva, Oct 9, 2012 ATIS Intellectual Property Rights Activities 2012 – An Update Thomas Goode General Counsel, ATIS Document No: GSC16bis-IPR-08 Source: ATIS Contact: Thomas Goode GSC Session: IPR Working Group Agenda Item: 4.2
Geneva, October 9, 2012 GSC16bis-IPR-08 2 Background – ATIS IPR Policy ATIS’ IPR policy is based on the policy of the American National Standards Institute (ANSI). Section 10.4 of the ATIS Operating Procedures (Version 5.2) details ATIS’ patent disclosure and assurance policy, which: –Encourages the disclosure of relevant patented inventions at the “earliest possible time” in the development of deliverables; –Notes that, if ATIS receives notice that a deliverable may require use of a patented invention, an assurance stating that licenses will be made available on RAND terms, must be received; and –Specifies that any writing submitted as of January 31, 2011, for the purpose of expressing a licensing assurance, shall not qualify as such an assurance unless it expressly states that the assurance is irrevocable.
Geneva, October 9, 2012 GSC16bis-IPR-08 3 ATIS Patent Policy Section 10.4 of the ATIS OP If ATIS receives a notice that a proposed ANS [American National Standard] may require the use of a patented invention, the procedures in this clause shall be followed. Statement from patent holder Prior to approval of such a proposed ANS, ATIS shall receive from the identified party or a party authorized to make assurances on its behalf, in written or electronic form, either: a)Assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or b)Assurance that a license to such essential patent claim(s)will be made available to applicants desiring to utilize the license for the purpose of implementing the standard either: 1)Under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or 2)Without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination.
Geneva, October 9, 2012 GSC16bis-IPR-08 ATIS IPR Ad Hoc Committee In November 2010, the ATIS Board of Directors approved the creation of committee to provide input on IPR related issues, as appropriate, to ATIS staff and Board. –As a Board committee, participation is limited to representatives of ATIS Board member companies; other ATIS members are permitted to participate as observers. –Participants from 16 companies participate on the committee. –The committee has had little activity over the past year, in part because no issues have been raised with regard to ATIS’ IPR policy. 4
Geneva, October 9, 2012 GSC16bis-IPR-08 U.S. Government Engagement in Standards Activities Memorandum issued January 17, 2012 by the U.S. Trade Representative, Office of Management and Budget (OMB), and Office of Science and Technology Policy: –The effectiveness of the U.S. standards-setting system depends on continued private sector leadership and engagement. –OMB Circular A-119 remains the primary strategy for governmental involvement in standards development. This circular encourages U.S. governmental use of and participation in the development of voluntary industry standards. –In limited policy areas, the government may need to help accelerate standards development by: clearly identifying the standards-based challenges; defining its goals; providing an analysis of the perceived standards gap and what must be done to close it; and supporting the technical work to achieve its goals. 5
Geneva, October 9, 2012 GSC16bis-IPR-08 U.S. Government Engagement in Standards Activities Memorandum outlines five (5) fundamental strategic objectives that should guide its engagement in standards: 1.Produce timely, effective standards and efficient conformity assessment schemes that are essential to addressing an identified need; 2.Achieve cost-effective, timely and effective solutions to legitimate regulatory, procurement and policy objectives; 3.Promote standards and standardization systems that stimulate and sustain innovation and foster competition; 4.Enhance U.S. growth and competitiveness and ensure non- discrimination, consistent with international obligations; and 5.Facilitate international trade and avoid the creation of unnecessary obstacles to trade. 6
Geneva, October 9, 2012 GSC16bis-IPR-08 7 Incorporation by Reference Petition for Rulemaking and Request for Comments, published February 27, 2012, seeks comment on whether to amend U.S. regulations governing the approval of agency requests to incorporate material by reference (IBR) into the Code of Federal Regulations: –Does “reasonably available” mean material must be free or available to anyone online? –Should agencies bear the cost of making material available? –Should the Office of the Federal Register have the authority to deny IBR approval requests if the material is not available online for free? –Is OMB better positioned to handle associated policy issues to determine “reasonable availability”?
Geneva, October 9, 2012 GSC16bis-IPR-08 8 Incorporation by Reference ATIS filed comments in response to the Petition/Request noting that it: –Publishes numerous standards, technical reports and other materials, which are copyrighted by ATIS and made publically available through a variety of sources. Some of these deliverables are IBR, including industry numbering and emergency alerting standards. –Takes a flexible approach to the availability of its deliverables, making some available at no-cost to the public while assessing a charge to non-members for other documents. Federal, state and local government agencies, upon request, may obtain at no-cost copies for internal use. –Has experienced no instance where access to its materials has been problematic, whether for reasons of cost or otherwise.
Geneva, October 9, 2012 GSC16bis-IPR-08 9 U.S. Government Use of Voluntary Industry Standards OMB Request for Information (RFI), published March 30, 2012, seeks comment on a variety of issues related to governmental use of and participation in standard setting, including: –Whether there is a need to update OMB Circular A-119? –What factors should agencies examine in evaluating whether to use voluntary non-consensus standards? –What are the best practices for providing access to standards incorporated by reference in regulation? –What costs are involved in the development and/or revision of standards? –Should OMB set out Best Practices on how to reference/incorporate standards in regulation?
Geneva, October 9, 2012 GSC16bis-IPR U.S. Government Use of Voluntary Industry Standards ATIS filed comments in response to the RFI: –Supporting the use of voluntary consensus-based standards; –Noting that the elimination of Circular A-119’s requirement for consensus processes would risk the quality and nature of standardization; –Supporting Circular A-119’s policy of observing and protecting the rights of copyright holders for IBR standards; –Supporting increased governmental outreach and participation in private standards bodies; and –Noting that there is no need to revise Circular A-119.
Geneva, October 9, 2012 GSC16bis-IPR-08 ATIS Participation in oneM2M ATIS is a founding Partner Type 1 in the oneM2M global initiative, which will develop machine-to-machine service layer specifications. There are different levels/types of participation in oneM2M (including Partners Type 1, Partners Type 2, and Members); each has different IPR obligations: –Partners Type 1 have IPR policies that support a FRAND regime; –oneM2M members (must be admitted through one or more Partners Type 1) must abide by the IPR policy of a specific Partner Type 1; and –Partners Type 2 must have compatible IPR policy or provide written assurance that any contributions are made pursuant to a Partner Type 1 policy, and that its members are bound by such an IPR policy relative to any Partner Type 2 contribution. 11
Geneva, October 9, 2012 GSC16bis-IPR Supplementary Slides
Geneva, October 9, 2012 GSC16bis-IPR Links to ATIS Public Policy Filings ATIS public policy filings (including those referenced in this presentation) –http://www.atis.org/legal/publicpolicy.asphttp://www.atis.org/legal/publicpolicy.asp ATIS Operating Procedures: –http://www.atis.org/legal/op.asphttp://www.atis.org/legal/op.asp List of Patent Assurance Statements received by ATIS: –http://www.atis.org/legal/patentinfo.asphttp://www.atis.org/legal/patentinfo.asp