Document No:
GSC16bis-IPR-03
Source:
ETSI
Contact:
Maïssa Bahsoun
GSC Session:
IPR Working Group
Agenda Item:
4.3
Latest legal developments
within ETSI
Maïssa Bahsoun
ETSI Legal Advisor
Geneva, October 9, 2012
GSC16bis-IPR-03
Background
Main Characteristics of ETSI IPR Policy
•
Focus on the most suitable technology for the standards.
•
Early identification and disclosure of essential IPRs, especially in
cases where the holder of essential IPR is not prepared to grant
licences under FRAND terms and conditions.
•
Ensuring the future applicability of the standards in full respect of the
rights of the IPR owner by requesting irrevocable FRAND licensing
undertaking.
•
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.
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ETSI IPR Online Database
•
The current ETSI IPR Database went live in March
http://ipr.etsi.org/ and allows online IPR declarations.
•
Evolutions/enhancements mainly based on feedback received from
users, are being implemented (e.g., Pre-selected Projects are available
as suggestions, disclosures can be created from previous ones).
•
The ETSI IPR Online database is increasingly used, including by nonMembers and by companies that were used to using the IPR Licensing
Declaration forms in paper form.
•
“Dynamic Reporting” provides access to information
relationship between patented technologies and standards.
•
Snapshot Content (September 2012): 126 602 Patents equalling
approximately 11 455 Patent Families have been declared as being
essential to 308 ETSI Projects and/or 4 854 ETSI Standards by 184
Declaring Companies through 1 266 IPR licensing declarations. In
terms of Patents and/or IPR licensing Declarations, this represents an
increase of more than 10% compared to last year statistics.
2011 at:
on
the
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Software Copyright Guidelines
The following approach has been incorporated into the ETSI IPR
Policy modifications and IPR Guide at GA#59 in November 2011:
(a) In general, there shall be no requirement to use software
incorporated in an ETSI Standard or Technical Specification in
order for an implementation to conform to this Standard or
Technical Specification (exceptions: data/ stream structures &
conformance testing);
(b) The copyright license as defined in the ETSI IPR Policy for
contributed software shall come “automatically” on a royalty-free
basis whenever copyright-protected software is contributed
“silently,” but the option exists at the contributor’s discretion at
the time of contribution to give an irrevocable FRAND licensing
undertaking instead;
(c) The basic principle of the ETSI IPR regime remains FRAND.
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Ongoing policy discussions
within the ETSI IPR SC (1)
In response to the needs of ETSI members, and the ICT industry in
general, the ETSI IPR Special Committee (IPR SC) has embarked in
discussions on the following topics:
FRAND:
• should ETSI provide guidelines/principles for compensation elements
under the FRAND commitment ?
Reciprocity:
• should ETSI consider the scope of any option that a FRAND
undertaking provided in accordance to Clause 6.1 of the ETSI IPR
Policy may be made subject to the condition that those who seek
licenses agree to reciprocate ?
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Ongoing policy discussions
within the ETSI IPR SC (2)
Injunctive Relief:
•
should ETSI define under which conditions a patent owner will refrain
from pursuing injunctive relief (including an order of exclusion or
similar prohibition on importation) ? (such conditions may pertain to
the conduct of either or both licensees and licensors.)
Transfer of a Patent Subject to a FRAND Licensing Commitment:
• Recognizing the statement made by the European Commission in
paragraph 285 of its Horizontal Cooperation Agreement Guidelines
expressing a preference for a “requirement on all participating IPR
holders who provide such a commitment to ensure that any company
to which the IPR owner transfers its IPR (including the right to license
that IPR) is bound by that commitment, for example, through a
contractual clause between buyer and seller,” does ETSI need any
changes in the IPR Policy and related Guide to bring ETSI’s approach
more in line with this preference ?
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TruePosition
•
ETSI has been dismissed as a party to the TruePosition case.
•
3GPP has now finally been made a part of the TruePosition case and
the 3GPP’s Motion To Dismiss the amended complaint was due 15
August, with True Position’s opposition to 3GPP’s Motion To Dismiss
due 5 September and 3GPP's response to True Position opposition
due 19 September.
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US NAS study
The US National Academies’ Board on Science, Technology and
Economic Policy (STEP) has been commissioned by the USPTO to
prepare a report on how leading standards bodies address issues of IP
arising in connection with the development of technical standards.
Information has been provided on two topics:
– Policies, Practices, and Experience of Leading Standards Organizations
– SDO-Patent Office Cooperation and Information-Sharing
ETSI has also participated as Discussant in both sessions in the NAS
Symposium about this study in Washington, DC, Oct. 3-4 2012.
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Hague Convention
•
•
•
ETSI is noting an increasing number of requests to provide information
for use in foreign litigation (mainly in the US).
According to the application of article 1bis of French law n°68-678 of
July 26, 1968 modified by law n°80-538 of July 16, 1980 on the
communication of economic, commercial, or technical documents or
information to foreign individuals or legal entities (called the “French
Blocking Statute”), ETSI can only answer these requests if they are
made in line with the Hague Convention of March 18, 1970 on the
Taking of Evidence Abroad in Civil or Commercial Matters (“Hague
Convention”).
Taking into account that ETSI is an organization counting more than
700 members, ETSI will not accept requests made pursuant to Chapter
II of the Hague Convention (i.e., voluntary provision of information by
ETSI), as it would jeopardize ETSI’s “neutral position” in litigation
cases involving one of its members. Therefore, ETSI only welcomes
requests made pursuant to Chapter I of the Hague Convention.
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Conclusions
•
The ETSI IPR Policy is one of the key elements for the success
of ETSI’s globally-applicable standards.
•
Providing access in a transparent fashion to IPRs being declared as
essential to ETSI Standards and Technical Specifications is a basic
element in the framework of the ETSI IPR Policy.
•
ETSI is facing new challenges and is fully prepared to adapt/clarify its
Tools and Directives to meet the requirements of a changing
environment, where necessary.
•
ETSI's IPR SC vision is to be "The PLACE" where industry can openly
discuss IPR related issues !
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