TSB 1 Overview of TSB Director’s Ad Hoc Group on IPR GSC 8, Ottawa, Canada, 27 April – 1 May 2003 by Houlin Zhao Director, Telecommunication Standardization Bureau (TSB) International Telecommunication Union Place des Nations - CH-1211 Geneva 20 – Switzerland Tel: Fax: ITU Web address:

TSB 2 TSB Director’s Ad Hoc Group on IPR Chairman: Mr. Houlin Zhao (TSB Director) Members: Open to ITU Members States, Sector Members + invited participants Active participants include: AT&T, BT, France Télécom, Fujitsu, HP, KDDI, Lucent, Nortel Networks, Siemens, ANSI, ETSI, ISO, TTC About the IPR Ad Hoc Group: (

TSB 3 IPR Ad Hoc meetings held since GSC 7/ RAST November June February 2003 IPR Ad Hoc Group meetings Next meeting: 7-8 November 2003

TSB 4 1ITU-T | ISO/IEC common text Patent Declaration Form ( -ITU-T Patent Declaration Statement provides for “Reciprocity” condition for option 1 (free) and option 2 (RAND), while ISO/IEC Patent Policy does not expressly provide for such a condition -Solution: Check boxes to indicate that the Patent Holder’s willingness to license is conditional on reciprocity are included in options 1 and 2 A definition of the term “Reciprocity” is introduced in the form - ISO/IEC has officially endorsed the use of this form. Patent Policy Issues

TSB 5 2Application of the ITU-T Patent policy to Appendices or other informative parts of ITU-T Recommendations -There has been a split between those for and against in the IPR Ad Hoc group - Pragmatic solution was agreed at the February 2003 meeting The question of whether to encourage the submission of a Patent Statement for the informative parts of a proposed Recommendation should be considered on a case-by-case basis. Judgment is left to the relevant Study Group - No change to the actual Patent Policy or to the Guidelines - Close the discussion, which may, if requested, be revisited after some experience has been gained Patent Policy Issues (continued)

TSB 6 3Discussion on “ Reciprocity ” - The group has been further elaborating the definition of “Reciprocity”. There were opinions such as: Reciprocity is related only to other “essential” patents in connection with the same standard A Patent Holder prepared to grant a licence “on the basis of reciprocity” might not be committed to grant licences to such parties Need for clarification on whether or not a Patent Holder choosing option 1 (free) must grant a free licence to another Patent Holder who offers option 2 (RAND) Patent Policy Issues (continued)

TSB 7 3Discussion on “ Reciprocity ” (continued) - Proposed text on Definition/Clarification for the Guidelines (for further study) As used herein, the word “Reciprocity” applies solely to prospective licensees having one or more patents or patent claims that are also essential for the implementation of the same ITU-T Recommendation, and means that the Patent Holder shall only be required to license any such prospective licensee if the latter will commit to licensing its essential patent(s) or patent claim(s) for implementation of the same ITU-Recommendation royalty-free or under reasonable and non-discriminatory terms and conditions. Patent Policy Issues (continued)

TSB 8 4Ongoing discussion on other Patent-related issues -Proposed change from “pending patent application” to “published patent application” in the patent policy and its text Guidelines -Proposal addition of new option for “conditional” royalty-free licence -Handling of normative referenced text developed by other organizations -Proposal to cope with handling complex IPR cases - e.g.: the possible setting up of an operational “IPR group” in charge of evaluating patent statements at the request of the Study Group Patent Policy Issues (continued)

TSB 9 5Handling of Patent Declaration Statement Database - Entry of the Patent statements of which ownership has been transferred/withdrawn Patent Policy Issues (continued) The original entry remains with a remark stating the change of ownership -Patent statement presented after the approval of the Recommendation From July 2002 onwards, a remark, in red characters, is added in the remarks column. -Licensing declaration with additional condition As to whether or not to record in the Patent Database seek instruction the relevant Study Group

TSB 10 Development: 1Review of the draft guidelines developed by correspondence from the March 2001 meeting 2The IPR Ad Hoc Group, at its June 2002 meeting, agreed to issue the Software Copyright Guidelines for use on a trial basis in Study Groups 3As a result of the discussions during the February 2003 meeting, version 2.1 was created for use on a continuous trial basis Software Copyright Issues

TSB 11 Scope: 1“Guidelines” instead of “Policy” 2The structure of the Guidelines is in principle similar to the ITU-T Patent Policy Guidelines 3The Guidelines discourage Study Groups from including copyrighted software in an ITU-T Recommendation. The incorporation of normative software should be applied in exceptional situations: highly complex algorithms requiring exactness, such as speech coders 4SDO standards: ITU-T ensures sublicensing with the Software Copyright Holder for the SDOs Software Copyright Issues

TSB 12 Software Copyright Licensing Declaration Similar to the Patent Declaration, the options being roughly grouped in three categories: Option 1Free licence to everyone. This option is subdivided into 4 options (see next slide) Option 2Paid for licence granted on reasonable terms and conditions on a worldwide non- discriminatory basis Option 3Unwillingness to grant licence Software Copyright Issues (continued)

TSB 13 Option 1 Free licence to everyone For option 1, the Software Copyright Holder should select one of the following: 1.1The Software Copyright Holder waives the Copyright 1.2The Holder transfers the Software Copyright to ITU on condition that ITU will grant a free licence on a non discriminatory basis 1.3The Holder grants a free licence on the basis of reciprocity and non-discriminatory basis (users don’t need to contact the Holder for a licence) 1.4The Holder grants a free licence on the basis of reciprocity and non-discriminatory basis (users need to contact the Holder for a licence) Software Copyright Issues (continued)

TSB 14 Issues remaining for further study: - Other than under option 1.1 (i.e. under 1.2, 1.3, 1.4 and 2), a licence statement should be included in the Software, permitting certain uses (i.e. the Software evaluation) of the Software free of charge and without the need for a further licence from the holder - Copyright notices for software used for conformance testing - Copyright notices for software developed collaboratively between ITU-T and ISO/IEC JTC1, i.e. ITU-T Recommendation H Consideration of issues arising from the participation of invited experts Software Copyright Issues (continued)

TSB 15 Non-members: 179 (16%) Option 2: % Members: 906 (84%) Option 1: 59 (5%) Option 3: 1 Patent Statements received: 1085 (as of 10 March 2003)