1. Standards and Intellectual Property Rights in ITU
SG and TSAG leadership Tutorial
Standards and Intellectual Property Rights in ITU
Nikos Volanis
Legal Officer
International Telecommunication Union
Hammamet, 4 November 2016
10-11 Jan 2013, Geneva

2. Why discuss IPR and standards?
SG and TSAG leadership Tutorial
Why discuss IPR and standards?
IPRs, especially patents, may be necessary for the implementation of an ITU-T standard
an inherent dissonance between the legal monopoly awarded to IPR owners to forbid others from using their IP and the foremost purpose of standards, i.e to be widely implemented
Three main tools to address IPR issues:
Common Patent Policy and related Guidelines
Software Copyright Guidelines
Trademark Guidelines
10-11 Jan 2013, Geneva

3. SG and TSAG leadership Tutorial
Patent Policy
SG and TSAG leadership Tutorial
The Patent Policy helps ITU manage the challenges associated with the inclusion of patents (“SEPs”) in its standards.
By requiring early disclosure of essential patents and licensing commitments, ITU aims to ensure that no SEP owner is placed in a position to stop others from implementing an ITU Rec., and mitigates patent hold-ups or other opportunistic behaviour.
10-11 Jan 2013, Geneva

4. Patent Policy Fundamental principles:
Early disclosure of SEPs or pending SEP applications
Accessibility of essential patents to everyone under reasonable and non-discriminatory conditions (“RAND”) should be guaranteed
Royalty-free (option 1), though other reasonable terms may apply (e.g. governing law, warranties)
Royalty (option 2)
SEP owner not willing to comply with option 1 or 2 above (option 3): the Rec. cannot include provisions depending on the specific SEP
Actual licensing terms are handled in bilateral negotiations between SEP owners and implementers of the Rec. Licensing disputes are settled outside ITU
Disclosure only through Patent Statement and Licensing Declaration Form. Despite its name, the Licensing Declaration Form is not a License Agreement. Once submitted, a Form containing licensing commitments cannot be withdrawn and cannot contain additional conditions by SEP.
ITU maintains an online database of all submitted Forms

5. Patent Policy
Ask whether anyone has knowledge of SEPs/applications the use of which is required to practice or implement the Rec.
The fact that such question is asked should be recorded in the meeting report, along with any affirmative responses.
A closer look at Common Patent Policy
Guidelines for implementation:
Publication on Patents, competition and standardization (non-authoritative):

6. Software Copyright Guidelines
Two documents to consider:
Software Copyright Guidelines
Software Copyright Statement and Licensing Declaration Forms
These documents may be found at
Unlike the Common Patent Policy, these Guidelines are specific to ITU only

7. Software Copyright Guidelines
Fundamental principles:
Software (SW) generally should not be included in Recs. SGs should consider alternatives before considering the inclusion of SW.
Even if the inclusion of SW is appropriate, it should be stressed that SW shall never be included in an ITU Rec. such that there is a requirement to incorporate that SW in a conformant implementation.
A SW Copyright Holder shall submit a SW Copyright Statement and Licensing Declaration in connection with any contribution of SW before such contribution is included in a Rec. SW should contributed in source code
(voluntary) incorporation of 3rd party contributed SW (≠ data/stream structures, XML data representations, flow charts) in conformant implementations, requires a license. Implementers should consult the database containing information about submitted Software Copyright Statement and Licensing Declaration forms to ascertain under which option the Software Copyright Holder is willing to provide a license.
all SW included in a Rec. shall be made available for free for ITU members / implementers for evaluation/testing purposes.
Keep in mind: there may also be patent-related issues with use/distribution of software included in ITU Recs.

8. Trademark Guidelines One document to consider:
Guidelines related to the inclusion of Marks in ITU-T Recommendations
No Declaration Forms
These documents may also be found at
Unlike the Common Patent Policy, these Guidelines are specific to ITU-T

9. Trademark Guidelines Fundamental principles re. use of TMs:
Guidelines apply to markTM, mark®, markSM, and certification marks (examples)
ITU Recs. must not appear to endorse any particular product or brand. Consequently, use of TMs in Recs. should be avoided.
Cases where inclusion of TMs may be allowed:
TM is contained in the designation of a referenced standard (“ISO/IEC xxx”)
TM is a well known short-hand reference to a standardized approach (e.g. WiFi, Bluetooth)
Seek guidance of TSB on how to ensure descriptive use of the TM in question.
All inclusion of trademarks in Recs. are subject to approval by TSB.
If, during development of Rec., a Study Group devises a name, mark or proprietary description of the Rec. or its standardized approach that it believes should be protected for use by those implementing the Recommendation, the Study Group should so advise the TSB Director.

10. Links
ITU’s Policy Documents on IPR issues:
TSB Director’s IPR AHG:
ITU [2014], “Understanding patents, competition and standardization in an interconnected world”