Document No:
GSC16-CL-06
Source:
IPR WG Chair
Contact:
Michael Eisen
GSC Session:
Closing Plenary
Agenda Item:
2.5
Summary of GSC-16 IPR WG
Meeting
Michael Eisen
WG Chair
Halifax, 31 Oct – 3 Nov 2011
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Meeting Overview
GSC16-CL-06
• Six organizations presented Contributions, primarily to
share new information:
–
–
–
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–
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ETSI
ITU
TIA
ANSI
ATIS
EPO
• Additional Members in attendance were CCSA, ISACC,
TTC and TTA
• Three Resolutions reviewed:
– Res 22: Intellectual Property Rights Policies
– Res 23: Cooperation with Patent and Trademark Offices
– Res 24: Open Standards
Halifax, 31 Oct – 3 Nov 2011
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ETSI Contribution
GSC16-CL-06
• ETSI IPR Policy is one of the key elements for the success
of ETSI’s globally-applicable standards
• ETSI is effectively facing new challenges and, where
necessary, adapts/clarifies its Tools and Directives to meet
the requirements of a changing environment
– New ETSI IPR Database
• To increase transparency patent data is normalized with EPO
database
– New Software Copyright guidelines
• in general, no requirement to use software incorporated in an
ETSI deliverable in a conforming implementation
• Developed defined licensing framework
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
NEW ETSI IPR Database Snapshot (End September
2011)
•
111,049 Patents (approximately 9325 Patent Families) have
been declared as being essential to 209 ETSI Projects and/or
4764 ETSI Standards by 171 Declaring Companies through
1145 Licensing Declarations
Origin - Declaring Companies
EU
CA
CN
JP
KR
US
Other
8%
26%
51%
2%
9%
2%
Halifax, 31 Oct – 3 Nov 2011
2%
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GSC16-CL-06
ITU Contribution
• Proposed changes to the Common Patent Policy
Guidelines (under review at ISO and IEC):
– Definition of “Patent” has been clarified to address the
“essentiality” issue
– The obligation on a disclosing patent holder who later
transfers the patent(s) to seek to bind the new owner to the
original licensing commitment has been clarified
– Clarified that a licensing commitment cannot be withdrawn or
amended (absent a more favourable licensing commitment)
• Proposed revisions to the Software Copyright
Guidelines - topics being discussed include:
– The definition of “software” and an appropriate licensing
framework
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
ITU Contribution
• Longstanding ITU-EPO Collaboration
Agreement
– ITU and EPO patent databases will be linked to increase
transparency relative to the identity and status of claimed patents
– ITU and EPO will continue to collaborate on ITU document
format definition and dissemination policies to align them as
much as possible on EPO prior art search needs
– ITU is also seeking bilateral cooperation with other Patent
Offices
• International Standards/IPR Conference in India
– ITU, the Indian Government and GISFI are organizing a
workshop in India on 19-20 December 2011 to provide an
international forum to discuss current issues relating to the
inclusion of patented technology and software in standards
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
TIA Contribution
• In late 2010, ANSI proposed changes to the “Essential
Requirements” for American National Standards to
address possible issues of duplicating or conflicting
standards
– TIA responded that these proposed requirements would hamper
the ability of ICT accredited standards bodies to respond in a
timely manner to rapidly changing market demands and inhibit
innovation/competition in the ICT standardization system
• On behalf of the National Science and Technology
Council’s (NSTC) Sub-Committee on Standardization,
NIST sought public comment on Federal agency
participation in the development and implementation of
standards and conformity assessment activities and
programs
– TIA’s response supported F/RAND-based IPR policies, the
GSC definition of “Open Standards” and voluntary (but not
mandatory) “ex ante” IPR policies
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
TIA Contribution
• On October 14, the NSTC SoS released its report titled “Federal
Engagement in Standards Activities to Address National Priorities:
Background and Proposed Policy Recommendations” (see
http://www.whitehouse.gov/sites/default/files/microsites/ostp/federal_engagement_in_
standards_activities_october12-final.pdf) (observed that “there is no one ideal, onesize-fits-all IPR policy and that standards organizations are in the best position to
establish effective policies for addressing IPR issues related to the standards they
develop”)
• In early May 2011, the US Federal Trade Commission issued a call
for comment seeking to examine the legal and policy issues
surrounding the perceived problem of “hold-up” when patented
technologies are included in collaborative standards (Comments can be
found at: http://www.ftc.gov/opp/workshops/standards/index.shtml)
– TIA expressed the view that patent “hold up” is not a systemic problem, and
“[e]x ante disclosure of one set of terms and conditions fails to
recognize the diversity in standards, licensing arrangements, and
business interactions. RAND based policies, however, recognize this
diversity.”
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
TIA Contribution
• TIA also covered three “informational” items:
– The “Revised rules for the assessment of horizontal
cooperation agreements under EU competition law”
announced in December 2010 by the European
Commission’s DG Competition (see
http://ec.europa.eu/competition/antitrust/legislation/horizon
tal.html)
– The European Interoperability Framework (version 2)
announced by the EC in December 2010 (see
http://ec.europa.eu/isa/policy/index_en.htm)
– The Indian Ministry of Communications & Information
Technology’s Department of Information Technology’s
“Policy on Open Standards for e-Governance” released in
November of 2010.
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
EPO Contribution
• Standards are more and more linked to patents
• It also posited the possibility of conflicting trajectories
between standards and patents and expressed the need
for clear rules when patented technology is included in
standards to avoid patents becoming a barrier to
implementation
• More accurate and timely information is necessary in the
case of essential IPR to make a well informed choice on
technologies to be included in standards
– As standards attract greater interest by governments,
SDOs and Patent Authorities are expected to increase
their coordination efforts.
Halifax, 31 Oct – 3 Nov 2011
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EPO Contribution
GSC16-CL-06
• Achievements:
– ITU, ETSI and IEEE-SA all working on format-related and
documentation issues to improve identification of prior art for
patent examination
• Cooperation with ETSI has lead to a link of their IPR declaration
database to the EPO patent database
– Increased awareness and improvements in Patent Office
infrastructure
• Goals:
– Contributing to both technical and structural transparency
– Establishing patent-related services for SDOs (such as patent
search services and patent landscaping services)
– Increasing cooperation and common approaches among major
Patent Offices
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
ATIS Contribution
• On March 7, 2011, ATIS responded to a Request for Information
(RFI) from the National Science and Technology Council’s
Subcommittee on Standards (SoS)
• That response expressed a concern with efforts to fundamentally
change the standards process, and opined that there was no
need to do so since
– Fundamental changes could adversely impact ATIS members’
core operations and reduce the effectiveness of standards; in
addition, adverse impacts could arise from:
• Additional government-mandated standards
• Required governmental use or development of so-called
“open” (defined as royalty-free) standards
Halifax, 31 Oct – 3 Nov 2011
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ATIS Contribution
GSC16-CL-06
• On October 14, the SoS released a report based on input
received
– No single “ideal” IPR policy – SDOs are in the best position to
establish effective policies
• IPR policies should take into account the needs of both IPR holders and
implementers
• IPR policies should be accessible, clear and unambiguous
• On June 14, ATIS provided input to the U.S. Federal Trade
Commission (FTC) in response to its Request for Comments on
issues such as patent disclosures, RAND licensing commitments
and ex ante disclosure and/or negotiation of licensing terms
– ATIS’ comments observed that ATIS and other SDOs with
effective IPR policies continually review and update their policies
based on industry consensus
– Mandating changes to the way that SDO policies address IPR
issues could create imbalances among various interests and
inefficiencies in the development process
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Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
ANSI Contribution
• ANSI’s Contribution was designed to provide an update on its
activities in the area of intellectual property rights, its views on
issues relating to the inclusion of patents, copyrighted software
or trademarks in standards and issues relating to the assertion of
copyright in the standards themselves, as well as ANSI’s
assessment of the legal landscape in the United States regarding
the inclusion of essential intellectual property in standards
• Major new items added to the ANSI Contribution since GSC-15
include references to a number of recent events:
– The United States Standards Strategy reapproved by ANSI on December 2,
2010
– The publication of the summary of comments filed in response to the
National Science and Technology Council’s Subcommittee on Standards
request for information “Effectiveness of Federal Agency Participation in
Standardization in Select Technology Sectors” on December 8, 2010
– On October 14, the National Science and Technology Council
Subcommittee on Standards released its report titled “Federal Engagement
in Standards Activities to Address National Priorities: Background and
Proposed Policy Recommendations”
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Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
ANSI Contribution
• Other ANSI areas of focus:
– The publication of the revised competition guidance on horizontal
cooperation agreements by the European Commission on January
14, 2011 (which in part addresses standards bodies procedures and
policies)
– Two recent publications that address issues of copyright protection
for standard incorporated by reference into government regulations
• “Why Voluntary Consensus Standards Incorporated by
Reference into Federal Government Regulations Are Copyright
Protected” (“ANSI”)
• “Incorporation by Reference” draft (“ACUS”)
– ANSI contributions submitted to a public forum convened by the
Federal Trade Commission (“FTC”) on the subject of IPR-related
competition issues in standard setting
– ANSI Legal Issues Forum held on October 13, 2011: “Patented
Technology in Standards”
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
Resolutions
• All three existing Resolutions were recognized as
important and reaffirmed by the Members:
– Res 22: Intellectual Property Rights Policies
– Res 23: Cooperation with Patent and Trademark Offices
– Res 24: Open Standards
Halifax, 31 Oct – 3 Nov 2011
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GSC16-CL-06
Recommendations to Plenary
Concerning Next GSC IPR WG Meeting
•
The IPR WG confirmed the value of meeting and exchanging information
and views
•
The IPR WG also expressed a desire to increase participation
•
Recommend tentatively holding an IPR WG meeting with remote
participation capability at GSC-17
•
Between now and GSC-17 ISACC to organize a face-to-face and/or virtual
meeting to confirm whether an IPR WG meeting will be held at GSC-17
•
In any event, expand the scope of the IPR WG to include standards policy
issues (as was reflected in a number of contributions to this meeting)
•
Extend an invitation to WIPO and other patent offices (at least Korea) to
participate in WG deliberations at GSC-17
Halifax, 31 Oct – 3 Nov 2011
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