Tutorial on intellectual property rights (“IPRs”) TSAG, tariff groups and focus groups

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Tutorial for leadership teams of ITU-T study groups,
TSAG, tariff groups and focus groups
Tutorial on intellectual
property rights (“IPRs”)
Antoine Dore
Legal Officer
ITU Legal Affairs Unit
Phone: +41 22 730 6338
Email: [email protected]
Geneva, 15-16 December 2008
Part 1
Overview of the main forms
of intellectual property
Tutorial for SG & TSAG leadership teams
Geneva, 15-16 December 2008
2
The main forms of
intellectual property
Copyrights
Patents
Trademarks
Tutorial for SG & TSAG leadership teams
Geneva, 15-16 December 2008
(artistic works)
(inventions)
(product identity)
3
Copyrights
• Rights given to creators for their
literary and artistic works
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Geneva, 15-16 December 2008
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What is covered
by copyright?
Copyright protects the expression of an
idea and not the idea itself
–
–
Books, films, music, tutorial on IPRs, etc.
Computer programmers are considered
artists under copyright law
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Geneva, 15-16 December 2008
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Main rights conferred upon the
copyright owner
Reproduction
Publication
Distribution
Sale/lease
Translation
• ©
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Geneva, 15-16 December 2008
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Main restrictions to copyright
Copies for private purposes
Copies for archiving purposes
Quotations
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Patents
Rights granted for an invention, which
is a product or a process that provides
a new way of doing something, or
offers a new technical solution to a
problem
–
Whether or not patents can be granted for
computer software is debated
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Geneva, 15-16 December 2008
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What can be patented?
Inventions
–
–
–
Must be new
Must be useful
Must not be obvious
Application evaluated by a patent
examiner
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Geneva, 15-16 December 2008
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Protection granted by patents
Monopoly on the invention, typically for
a period of 20 years
No protection on the description
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Trademarks
A distinctive sign which identifies
certain goods or services as those
produced or provided by a specific
person or enterprise
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Geneva, 15-16 December 2008
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Protection granted
by trademarks
Exclusive right to use a mark to
distinguish services or products
Term of protection: unlimited as long
as the mark is used
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Geneva, 15-16 December 2008
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Formalities
Trademark®
-vsTrademark™
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Copyrights
the
expression
of an idea
Patents
the
monopoly
on an
invention
Trademarks
the symbol
used to
distinguish
goods
none
required
© but use of
symbol not
required for
protection
nil
20 years
required,
includes
review
process
no symbol
but patent
number
often seen
on product
expensive
unlimited
required,
optional in
common
law
jurisdictions
® or ™, use
of symbol
not strictly
required for
protection
moderately
expensive
life of the
author + 50
years
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Geneva, 15-16 December 2008
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Part 2
Overview of the “Common
Patent Policy for ITU-T/ITU-R/
ISO/IEC” and its related
Guidelines and Forms
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15
Common Patent Policy
Three documents to consider:
–
–
–
Common Patent Policy
Guidelines for implementation of the
Common Patent Policy
Patent Statement and Licensing
Declaration Forms
These documents may be found
at: www.itu.int/ITU-T/ipr/
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Common Patent Policy
What is the objective of the Common
Patent Policy?
–
To ensure that patented technology
incorporated into a Recommendation is
accessible to everyone without undue
constraints
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Common Patent Policy
The inclusion of patented technology into
standards raises very complex issues that
can be addressed in a number of ways:
–
–
–
–
ITU, ISO, IEC, ANSI, ETSI, ATIS, CCSA, TIA, TTA,
TTC, etc. have opted for the « RAND » approach
Other SDOs have chosen to address the same
issues by requiring patent holders to grant
royalty-free licenses
No consensus in the industry as to how best to
address IPR issues in the context of ICT
standardization
No « one-size-fits-all » solution; different
approaches can work in different environments
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Geneva, 15-16 December 2008
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Common Patent Policy
The Common Patent Policy attempts to
balance different and divergent interests to
promote broad participation and wide
implementation of the Recommendation
The main stakeholders in ICT
standardization are the:
–
–
–
–
Patent holder
Manufacturer
Service provider
Government
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Common patent Policy
Interests of the patent holder
–
–
Wants to share its innovations and obtain a (reasonable)
return on research investments
Rejects any obligation to disclose its licensing terms and
conditions
Interests of the manufacturer
–
–
–
Often, the manufacturer is a patent holder itself whose
technology is required by other manufacturers
Requires stability and certainty with regard to patent
commitments
May have concerns about the level of royalties, but is
generally supportive of RAND policies
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Geneva, 15-16 December 2008
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Common Patent Policy
Interests of the service provider
–
–
Business model is dependent upon the distribution of lowcost equipment and on the sales of value-added services
Has conflicting interests – to reduce the products costs
while encouraging patent holders to participate in
standardization activities
Interests of the Government
–
–
–
Promotes the public interest – i.e. broadest use possible of
standards / interoperability
Generally favors IPR policies that have strong disclosure
obligations and requirements that patents be licensed after
adoption of the standard
Royalty-free licensing is, sometimes, considered as a
preference
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Geneva, 15-16 December 2008
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Common Patent Policy
Fundamental Principles:
–
–
Early disclosure of essential patents
Accessibility of essential patents to
everyone under reasonable and nondiscriminatory conditions (“RAND”)
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Common Patent Policy
To whom does the disclosure rule apply?
–
« Any party participating in the work of the ITU
…»
When should disclosure take place?
–
« at the outset » or « as early as possible »
Is disclosure mandatory?
–
–
–
–
Strictly speaking, NO.
Common Patent Policy uses the word « should »
and not « shall »
The Guidelines use the word « encourage »
However, there may be severe consequences in
case of failure to disclose a patent – Dell case
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Common Patent Policy
What should be disclosed?
–
« essential patents ». Neither the Policy nor the
Guidelines include a definition of these terms.
Is disclosure limited to my own patents?
–
No. Consistent with the Policy, Recommendation
A.8, Article 3.6.1, stipulates that “any
party…should draw the attention of the Director
of TSB to any known patent…either of their
own or of other organizations.”
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Common Patent Policy
Do I have to conduct patent searches?
–
information should be provided on a best
effort basis and there is no requirement
for patent searches
How do I disclose my patents?
–
The forms attached to the Policy must be
used
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Common Patent Policy
A word of wisdom regarding the duty to
disclose: since patents are complex
legal instruments, in case of doubt…
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Common Patent Policy
Patent Statement and Licensing Declaration
Form
–
–
–
The main purpose of the Declaration Form is to
ensure that patent holders will agree to license
their technology on a royalty-free basis or under
RAND conditions
Despite its name, the Licensing Declaration Form
is not a License Agreement
Generally speaking, the Declaration Form
provides three options
Option 1 - Royalty-free
Option 2 - RAND
Option 3 - No license
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Common Patent Policy
–
–
–
Patent Holders must use the Declaration Form
Declaration Forms must be sent to the attention of
the TSB Director and not to the Study Group
Declaration Forms (licensing commitments) cannot
be withdrawn
Two exceptions – obvious errors and more favorable
licensing conditions
–
Recommendation A.1, Article 1.4.6: “Chairmen will
ask, during each meeting, whether anyone has
knowledge of patents the use of which may be
required to implement the Recommendation…”.
An oral response (declaration) during a SG meeting is
not sufficient to conform to the Policy – Declaration
Form must also be filled-in and returned to the TSB
Director
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Common Patent Policy
In case Option 3 is selected (unwillingness to
license), the patent holder must provide the
following information
–
–
–
Patent number
An indication of which portions of the
Recommendation is affected by the patent
A description of the patent claim
As long as there is no indication of a patent
holder selecting option 3, the
Recommendation may be approved
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Geneva, 15-16 December 2008
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Common Patent Policy
The Policy does not forbid the disclosure of
licensing terms – information may be
provided by Patent Holders, if they so desire
However, the Policy does not allow SG to
discuss these licensing terms or to take a
position concerning the essentiality, scope,
validity of any claimed patents
Discussions in SG as to whether or not
patented material should be included in a
Recommendation is allowed
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Common Patent Policy
Patent Database
–
–
–
May be found at
www.itu.int/ipr/IPRSearch.aspx?iprtype=P
S
Reflects the information received
Is not certified to either be complete or
accurate
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Common Patent Policy
Disputes
–
ITU will not engage in settling disputes
between a patent holder and a licensee
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Part 3
Overview of the Software
Copyright Guidelines
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Software Copyright Guidelines
Two documents to consider
–
–
Software Copyright Guidelines
Software Copyright Statement and
Licensing Declaration
These documents may be found at
www.itu.int/ITU-T/ipr/
Unlike the Common Patent Policy,
these Guidelines are specific to ITU-T
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Software Copyright Guidelines
What is the objective of these Guidelines?
–
To remind SG that ITU strongly discourages the
inclusion of copyrighted software owned
elsewhere than in ITU. Why?
The nature of copyright protection makes it possible to
work around a copyright to develop alternative solutions
–
To provide a process in the exceptional situations
where a Study Group still believes that software
copyrighted outside ITU must be included in a
Recommendation
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Software Copyright Guidelines
In practice, the vast majority of
software are submitted to ITU without
restrictions
« Mass-market software » or « off-theshelf software» should not be included
in Recommendations
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Geneva, 15-16 December 2008
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Software Copyright Guidelines
Software Copyright Statement and Licensing
Declaration Form
–
–
–
Again, the main purpose of the Declaration Form is to
ensure that copyright holders will agree to license their
software on a royalty-free basis or under RAND conditions
Despite its name, the Licensing Declaration Form is not a
License Agreement
Generally speaking, the Declaration Form provides three
options
Free Licenses
RAND Licenses
No license
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Geneva, 15-16 December 2008
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Software Copyright Guidelines
Software Copyright Database
–
–
–
May be found at
www.itu.int/ipr/IPRSearch.aspx?iprtype=S
W
Reflects the information received
Is not certified to either be complete or
accurate
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Geneva, 15-16 December 2008
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Part 4
Overview of the Trademark
Guidelines
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Geneva, 15-16 December 2008
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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
www.itu.int/ITU-T/ipr/
Unlike the Common Patent Policy,
these Guidelines are specific to ITU-T
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Geneva, 15-16 December 2008
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Trademark Guidelines
What is the objective of these
Guidelines?
–
–
To provide SG with general information on
the issues to be considered regarding the
use of marks
To provide specific guidelines on how
marks should be referenced
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Trademark Guidelines
Generally, if referenced properly, no
need to obtain permission from the
mark owner
–
No permission required to refer
descriptively in a Recommendation to a
third party’s technology
Recommendations should not appear
to endorse any particular product or
brand
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Any questions?
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