DOCUMENT #:
GSC13-IPR-08
FOR:
Presentation or Information
SOURCE:
ATIS
AGENDA ITEM:
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CONTACT(S):
Thomas Goode
ATIS Intellectual Property Rights
Policy Review
Thomas Goode
General Counsel, ATIS
Submission Date:
July 8, 2008
ATIS IPR Policy Review Task Force
• The ATIS IPR Policy Review Task Force was established in
November 2006 at the direction of the ATIS Board of Directors to
determine whether changes to ATIS’ IPR policy could make the
standards development process more effective.
– It is comprised of IPR policy subject matter experts from ATIS Board
representatives, including representatives from:
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ADTRAN, Inc.
AT&T
Alcatel-Lucent
Cisco
Corning
Ericsson
Global Crossing
Hewlett Packard
Intel Corporation
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Motorola
Nortel
QUALCOMM
Qwest
Research In Motion
Tekelec
T-Mobile
Verizon
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Background – ATIS IPR Policy
• ATIS follows the ANSI Patent Policy.
– ATIS encourages the disclosure of relevant patented inventions at the
“earliest possible time” in the development of an ATIS deliverable.
– If an ATIS deliverable requires the use of a patented invention, ATIS
shall receive assurance:
• in the form of a general disclaimer to the effect that the party does not
hold or does not currently intend holding any invention, the use of which
would be required for compliance with the proposed deliverable; or
• that a license will be made available without compensation or that a
license will be made available under reasonable terms and conditions
that are demonstrably free of any unfair discrimination.
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ATIS IPR Policy Review Task Force
• The Task Force has examined the existing ATIS IPR Policy and did not
identify any specific IPR-related problems that must be corrected.
– Other initial conclusions of the Task Force included: patent landscaping
should not be undertaken by ATIS; given the breadth of ATIS’ activities, the
IPR policy should retain its flexibility to accommodate the needs of specific
ATIS committees and forums; and ATIS may wish to consider the potential for
IPR-related issues when new ATIS committees and forums are created (e.g.,
to determine whether new disclosure mechanisms may be beneficial).
• The Board has asked the Task Force to continue its examination of
possible policy changes that could be beneficial to ATIS’ standard
development activities.
• In June 2008, the Board approved the use of an IPR Disclosure and
Assurance Form developed by the Task Force based on ATIS’ existing
IPR policy.
– Use of this form is voluntary; IPR-related disclosures and assurances may be
made through other methods.
– The form may help facilitate timely disclosures and assurances, and may
promote compliance with ATIS’ policy.
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ATIS IPR Policy Review Task Force
• The Task Force is continuing its evaluation of potential issues for
further consideration by the Task Force. Work will continue to:
– Further refine the existing ATIS IPR policy based on issues raised by
the Task Force during the development of the voluntary disclosure
and assurance form.
– Consider changes to the IPR policy to address issues such as:
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irrevocability;
the imposition of assurance obligations on transferees;
the potential creation of alternative ATIS IPR policies; and
the establishment of a policy that a RAND commitment or a commitment
to license on specific terms disclosed ex ante should be a commitment to
license worldwide to any implementer.
– The Task Force is prioritizing its examination of these issues; it is not
clear whether consensus will be reached on any of these changes.
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