ITU WORKSHOP ON STANDARDS AND
INTELLECTUAL PROPERTY RIGHTS (IPR) ISSUES
Session 1: Perspective of SDO
Dirk Weiler, Chairman of ETSI General Assembly and IPR Special Committee
© ETSI 2011. All rights reserved
ETSI ?
World-leading standards developing organization for
Information and Communication Technologies (ICT)
Recognized European Standards Organization (Directive
98/34/EC)
Independent, not-for-profit organization, created in 1988
More than 700 members worldwide, direct membership
Home of world class Standards (e.g. GSM/UMTS/LTE, DECT,
DVB, TETRA…)
Focus on Interoperability
29 000 + publications (3000 in 2010) – freely available
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ETSI Membership
Over 700 companies, big and small,
from more than 60 countries on
5 continents
Manufacturers, network operators,
service and content providers,
national administrations, ministries,
national standards organizations,
universities, research bodies,
consultancies, user organizations
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Collaboration
Strategic collaboration with numerous
global and regional standards-making
organizations and industry groupings
ETSI has 90+ partnership agreements
with other SDOs, Fora and Consortia
• e.g. ITU, IEC, ISO, APT, GISFI ...
Partnership Projects (3GPP, M2M to be
set up)
Contributing technical standards to
support regulation
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Objectives of Standardization
 Simplification of a complex, multilayer environment
(supplier, manufacturer)
 Stimulate innovation & competitiveness
 Create product interoperability
 Ensuring quality and reliability of products & services
 Increase efficiency (reduce costs, economy of scale)
 Increase Trust
 Load sharing / Cost saving
 Fight technical barriers to trade
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Interface between Standards and IPRs
Encouragement of innovation and diffusion of innovation are
common objectives of Standards and IPRs.
- but there is also by definition a tension between IPRs and
Standards
• IPRs are destined for private, exclusive use
• Standards are intended for free, collective use
Conflicts may arise when the technical content of a standard
falls within the scope of a patent - Essential IPR
"ESSENTIAL" as applied to IPR means that it is not possible on
technical grounds to make, sell, lease, otherwise dispose of,
repair, use or operate product which comply with a standard
without infringing that IPR.
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Role of IPR Policies of SDOs
IPR Policies of SDOs aim to solve the tension between IPRs
and Standards
Making the standardisation process transparent and patented
technology accessible
Taking into account the interests of the stakeholders
• IPR owners: in exploiting benefits from the legitimate exclusive right conferred by a
patent
• Implementers: having the right to make and sell standard compliant products under
reasonable conditions
• Public use: seeking the widest possible choice among affordable and interoperable
products
Securing a legal environment in order to facilitate the
implementation of a standard
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Main Characteristics of the ETSI IPR Policy
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 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 Special Committee
Provides advice and guidance to the ETSI Director-General,
General Assembly, and ETSI Board with regard to IPR related
issues when requested.
Assesses, elaborates and proposes necessary changes to the
IPR Policy and IPR Guide resulting from requests from the
Director-General, General Assembly, and ETSI Board, as
appropriate.
Exchange of views on the evolution of IPR related issues and
developments.
Open to ETSI Members, ETSI Secretariat, ETSI Councillors &
other guests and experts to be invited at the discretion of the
Chairman.
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Developments of the ETSI IPR Policy (1)
Disclosure and identification related:
Patent Family
IPR Declaration
Form
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• All documents having at least one priority
in common.
• Disclosure and FRAND Undertaking of a
specified member of a Patent Family shall
apply to all existing and future essential
IPRs of that Patent Family, unless IPR
owner explicitly excludes members of
Patent Family.
• The use of the IPR Licensing Declaration
Forms is mandatory.
Developments of the ETSI IPR Policy (2)
Licensing Undertaking related:
Irrevocability of
FRAND licensing
undertaking
• FRAND licensing undertaking fails to serve
purpose if it can be revoked at a later point
• Brings legal certainty to the standard
adopters
Transfer of
Ownership
• The transferee shall exercise reasonable
efforts to notify the assignee of the FRAND
undertaking it has made to ETSI
• Transfer of an IPR should not be used to
circumvent a FRAND licensing undertaking.
Software Copyright
Guide
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• Modifications to the ETSI IPR Policy and the ETSI
Guide on IPRs to ensure the appropriate handling
of Software Copyright issues.
New ETSI IPR Database (1)
DARE Project
The new ETSI IPR Database went live in March 2011.
The main reason for the new ETSI IPR database was to increase the
transparency of the IPRs that have been declared as being
potentially essential to ETSI.
The database is available under http://ipr.etsi.org/.
All legacy data of the previous database have been migrated to the
new ETSI IPR database.
It allows declarants to make IPR declarations online, ensuring
compliance with the mandatory form sheets.
ETSI is further developing the new ETSI IPR database based on
feedback received by users and ETSI members and will implement
shortly the first set of evolutions/ enhancements.
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New ETSI IPR Database (2)
Increase of Transparency
Patent data is normalized with data from the EPO database espacenet.
Provides transparency and actuality with regards to patents and their
patent families.
Provides features allowing to search the content of the database by
declaration as well as by the different data instances contained in
each declaration.
Relationships between elements contained in the publicly reflected
IPR declarations can be analyzed by obtaining e.g. statistical
overviews and specific details of the information contained in the
concerned IPR declarations (“Dynamic Reporting”).
• All declarations are available in scanned form.
• All data captured in a consolidated form in an ETSI special report
available twice a year.
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Conclusions
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 effectively facing new challenges and, where
necessary, adapts/clarifies its Tools and Directives to meet
the requirements of a changing environment.
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Thank you!
For further information please contact: legal@etsi.org
© ETSI 2011. All rights reserved