A Review of IPR Policy Revisions in the Wake of Antitrust Actions Anne Layne-Farrar, Vice President SIIT 2013

Private and Confidential The Research Question 2 Several competition agencies have suggested intervening in the cooperative standard setting process –Stated goal is to correct the perceived problems with patent disclosure and FRAND licensing, such as patent holdup Numerous proposals for changes to SSO IPR policies have been made as well –Mandating rules governing what can and cannot be done with “standard essential patents” But while several good studies of current policies, little research on what SSOs have done over time to address perceived problems

Private and Confidential The Antitrust Debate Over Time 3

Private and Confidential Patent Ambush, 1995 Proactive ANSI (1967): –No standard issued without disclosure and RAND commitment ISO (1989): –Obligation among patent holders to disclose all essential patents ETSI (1993): –Disclosure obligation (licensing Undertaking) Reactive IEEE (1995): –Patented technology only included if “necessary” and RAND commitment TIA (2001): –Patent disclosure form CEN/CENELEC (2001): –Patent disclosure rules OASIS (2005): –Patent disclosure obligation VITA (2007): –Mandated patent disclosure 4

Private and Confidential Breach of FRAND – Excessive Rates, 2005 Proactive ANSI (1932): –Inclusion of patented technologies “considered favorably” if the patent holder is “willing to grant such rights as will avoid monopolistic tendencies…” ETSI (1993) – briefly: –Mandatory royalty disclosure (removed in 1994 policy) Reactive TIA (2005): –Patent can’t be used for monopoly OASIS (2005): –Binding licensing commitment IEEE (2007): –LOA w/optional term disclosure VITA (2007): –Mandatory term disclosure ISO/IEC/ITU (2008): –Actions against non-FRAND CEN/CENELEC (2009): –Binding licensing commitment 5

Private and Confidential Breach of FRAND – Encumbrance, 2008 Proactive IEEE (2007): –Addition of a clause stating that the transfer of essential patent rights does not affect licensing terms detailed in original LOA. Reactive ETSI (2008): –Member to notify ETSI of patent transfer and to notify transferee of FRAND obligation ISO/IEC/ITU (2012): –Addition of Section 1.7 “Assignment or Transfer of Patent Rights” to Annex detailing that licensing commitment are transferred along with patent rights 6

Private and Confidential Breach of FRAND – Injunctions, 2012 Proactive ETSI (1993) – briefly: –1993 interim policy prohibited injunctions as well as infringement ligation –1994 interim policy removed both prohibitions Reactive ITU (2013?): –Announced it will release a “compromise” during October meeting ETSI (2013?): –Scheduled a meeting to discuss options in December Stay Tuned… 7

Private and Confidential Concluding Remarks 8 Ample evidence of proactive and timely responses to antitrust issues as they emerge in public debate Not surprising that newly emerged issues not dealt with yet –These are complex issues that will have different implications for different SSOS So, no call for aggressive competition agency intervention Safe Harbor guidelines might be helpful –Need to recognize broad diversity in SSO needs Industry differences, membership preferences, role and importance of IPR, etc. all differ and all influence appropriate type/level of IPR rules