Fostering worldwide interoperabilityGeneva, July 2009 ETSI IPR Policy Latest Developments DARE Project Software Copyright Guide Erik Jansen, ETSI Legal Affairs Director Global Standards Collaboration (GSC) 14 DOCUMENT #:GSC14-IPR-008 FOR:Presentation SOURCE:ETSI AGENDA ITEM: IPR 4 CONTACT(S):Erik Jansen

Fostering worldwide interoperability 2 Geneva, July 2009 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. 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). 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, are not prohibited under the ETSI IPR Policy. In this context, ETSI provides a depository for URLs of IPR owners, which contain the relevant information. Background / main characteristics of the ETSI IPR Policy

Fostering worldwide interoperability 3 Geneva, July 2009 GA#52 decided in November 2008 on a series of modifications to the ETSI IPR Policy and the ETSI Guide on IPR. Modifications were proposed and elaborated in the ETSI IPR Special Committee (IPR SC), which held 5 meetings in 2007/2008. The IPR SC is activated in cases where the Chairman finds that urgent and important IPR-related issues arise. Further, the Chairman calls a meeting of the IPR SC when requested to do so by at least five members of the IPR SC. Decisions of the IPR SC made so far are all based on consensus. Dirk Weiler (Nokia Siemens Networks) has been appointed as Chairman of the IPR SC at GA#52. I. Recent Modifications to ETSI IPR Policy

Fostering worldwide interoperability 4 Geneva, July Patent Family 2. Irrevocability of FRAND licensing undertaking 3. Transfer of Ownership 4. IPR Declaration Forms Overview of Modifications

Fostering worldwide interoperability 5 Geneva, July 2009 Background: Need for clarification, whether the disclosure obligation includes or does not include the identification of all essential IPRs of a patent family. How to define a patent family? Consequences for FRAND licensing declaration. The subject has a connection to the restructuring of the ETSI IPR data base, as this structure has to allow the proper inclusion of information on patent families (DARE Project). 1. PATENT FAMILY (1)

Fostering worldwide interoperability 6 Geneva, July 2009 Modifications approved: New Clause 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.” New Clause 4.3 ETSI IPR Policy: “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.” New Clause 6.2 ETSI IPR Policy: “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.” PATENT FAMILY (2)

Fostering worldwide interoperability 7 Geneva, July 2009 Modifications approved: New Section 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.” Modified Section 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.” PATENT FAMILY (3)

Fostering worldwide interoperability 8 Geneva, July 2009 Background: FRAND licensing undertaking fails to serve purpose if it can be revoked at a later point. Modifications approved: Modified clause 6.1 ETSI IPR Policy “6.1 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:” 2. Irrevocability of FRAND licensing undertaking

Fostering worldwide interoperability 9 Geneva, July 2009 Background:  Transfer of an IPR should not be used to circumvent a FRAND licensing undertaking.  Legal context may be different in different jurisdictions with regards to the transfer of an IPR and FRAND licensing undertaking. Modifications approved: Modified Clause 6.1 ETSI IPR Policy: “.... The above undertaking may be made subject to the condition that those who seek licences agree to reciprocate. In the event a MEMBER assigns or transfers ownership of an ESSENTIAL IPR that it disclosed to ETSI, the MEMBER shall exercise reasonable efforts to notify the assignee or transferee of any undertaking it has made to ETSI pursuant to Clause 6 with regard to that ESSENTIAL IPR.” 3. Transfer of Ownership (1)

Fostering worldwide interoperability 10 Geneva, July 2009 New Section 4.2 of ETSI Guide on IPR Taking into account the importance of a robust standards system, those implementing ETSI standards should be able to rely on licensing undertakings provided in accordance with Clause 6.1 of the ETSI IPR Policy, regardless of any change in the ownership of the relevant IPRs. To that end, it is desirable that, to the maximum extent possible in each legal jurisdiction, when ownership of an ESSENTIAL IPR is transferred, any applicable licensing undertaking should automatically transfer to the new owner. Some legal jurisdictions may already provide for achievement of this result. However, ETSI recognises that this result may not be certain in all legal jurisdictions. Therefore, ETSI encourages: Prospective assignees or transferees to check for applicable licensing declarations, for example, by searching for registrations of such declarations in the ETSI IPR database; MEMBERS that have given General IPR licensing declarations to draw the attention of any assignee or transferee to the possibility that undertakings given in such declarations might apply to the IPRs that are to be assigned or transferred. Transfer of Ownership (2)

Fostering worldwide interoperability 11 Geneva, July 2009 The format and content of the IPR Licensing Declaration forms were changed to ensure their exact alignment with the text of the ETSI IPR Policy ( The IPR Licensing Declaration forms were moved from the ETSI Guide on IPRs into an Appendix to the ETSI IPR Policy itself to make the use of the IPR Licensing Declaration Forms mandatory. 4. IPR Declaration Forms

Fostering worldwide interoperability 12 Geneva, July 2009 DAtabase REstructuring (DARE) project The DARE Project results from a series of ETSI GA decisions to improve transparency of the >20000 IPR declarations recorded in ETSI. The vision of the DARE project is to review the current storage and presentation of essential IPR declarations in order to: deliver a robust, scalable declaration, interrogation and presentation solution for IPR data, provide as up-to-date as possible IPR data with minimum input from the members, become a must-consult and a world-renowned system in terms of IPR data archiving and enhance transparency of essential IPR. II. DARE Project (1)

Fostering worldwide interoperability 13 Geneva, July 2009 The analysis-phase of the DARE Project suggests to implement (for the time being): significant new features for the end-users (e.g. patent families, automatic update, reporting, history), means to avoid inconsistencies (adapted database model, linkage with EPO and other ETSI applications, automated consistency checking), as well as a reworked user interface (ergonomics, statistics, overviews). Next steps: Review of the final results of the Analysis by the IPR SC and the ETSI Board taking into account required investments for the suggested modifications of the ETSI IPR database application. DARE Project (2)

Fostering worldwide interoperability 14 Geneva, July 2009 Agreement that there is a need for guidance on software copyright within ETSI. Such Software Copyright Guide will be discussed/ elaborated in the IPR SC. Initial Position:  Definition of IPR in ETSI IPR Policy includes copyrights.  The incorporation of copyrighted software in a standard or technical specification raises additional issues that need to be addressed.  Growing number of copyright requests for the use of software shows the need for guidance. III. Software Copyright Guide (1)

Fostering worldwide interoperability 15 Geneva, July 2009 Basic principles for consideration: A distinction as to what types of software may be included and what types of software should not be included into a standard. A discouragement for the inclusion of any software that is likely to raise IPR issues. A procedure for exceptional situations, with a recommendation that whenever software is included in a standard or technical specification, it needs to be accompanied by adequate legal permissions. Software Copyright Guide (2)

Fostering worldwide interoperability 16 Geneva, July 2009 Background: The patent application process would benefit if the technology submitted or reviewed in SDOs was accessible for the patent offices’ assessments as to the existence of “prior art” when reviewing patent applications. SDOs and their membership would benefit from the issuance of high quality patents and from the interaction with patent offices. Based on ETSI’s existing close cooperation with EPO, ETSI is in the process of updating its meeting document templates used by ETSI Technical Bodies and WGs, to ensure that they include elements such as effective publication date, working group, data and place of meeting, author or editor field, as required by EPO to facilitate the work of patent examiners and to improve the identification of prior art. ETSI is willing to draw the attention of other SDOs, with which ETSI has established links/contacts, to the importance of the matter and to share information on the progress made in ETSI with this regard. IV. EPO – review of meeting documents

Fostering worldwide interoperability 17 Geneva, July 2009 ETSI IPR Policy is fairly balancing all the interests involved ETSI IPR Policy is one of the key elements for the success of ETSI’s globally-applicable standards allowing Members to fully reserve their IPRs was beneficial to the drafting of excellent and high-quality standards incentive for high technology companies to participate in the standardization process Where necessary, ETSI adapts/clarifies its Directives to meet the requirements of a changing environment. ETSI will continue to lead the debate on IPRs and Standards. CONCLUSIONS

Fostering worldwide interoperability 18 Geneva, July 2009 Thank you for listening Erik Jansen