Document No:
GSC16bis-IPR-08
Source:
ATIS
Contact:
Thomas Goode
GSC Session:
IPR Working Group
Agenda Item:
4.2
ATIS Intellectual Property Rights
Activities 2012 – An Update
Thomas Goode
General Counsel, ATIS
Geneva, Oct 9, 2012
GSC16bis-IPR-08
Background – ATIS IPR Policy
• ATIS’ IPR policy is based on the policy of the American
National Standards Institute (ANSI).
• Section 10.4 of the ATIS Operating Procedures (Version
5.2) details ATIS’ patent disclosure and assurance
policy, which:
– Encourages the disclosure of relevant patented inventions at the
“earliest possible time” in the development of deliverables;
– Notes that, if ATIS receives notice that a deliverable may require
use of a patented invention, an assurance stating that licenses
will be made available on RAND terms, must be received; and
– Specifies that any writing submitted as of January 31, 2011, for
the purpose of expressing a licensing assurance, shall not
qualify as such an assurance unless it expressly states that the
assurance is irrevocable.
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ATIS Patent Policy
Section 10.4 of the ATIS OP
If ATIS receives a notice that a proposed ANS [American
National Standard] may require the use of a patented
invention, the procedures in this clause shall be followed.
Statement from patent holder
Prior to approval of such a proposed ANS, ATIS shall receive from the
identified party or a party authorized to make assurances on its behalf, in
written or electronic form, either:
a) Assurance in the form of a general disclaimer to the effect that such
party does not hold and does not currently intend holding any essential
patent claim(s); or
b) Assurance that a license to such essential patent claim(s)will be made
available to applicants desiring to utilize the license for the purpose of
implementing the standard either:
1) Under reasonable terms and conditions that are demonstrably free
of any unfair discrimination; or
2) Without compensation and under reasonable terms and conditions
that are demonstrably free of any unfair discrimination.
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ATIS IPR Ad Hoc Committee
• In November 2010, the ATIS Board of Directors
approved the creation of committee to provide input on
IPR related issues, as appropriate, to ATIS staff and
Board.
– As a Board committee, participation is limited to representatives
of ATIS Board member companies; other ATIS members are
permitted to participate as observers.
– Participants from 16 companies participate on the committee.
– The committee has had little activity over the past year, in part
because no issues have been raised with regard to ATIS’ IPR
policy.
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U.S. Government Engagement in
Standards Activities
• Memorandum issued January 17, 2012 by the U.S. Trade
Representative, Office of Management and Budget (OMB),
and Office of Science and Technology Policy:
– The effectiveness of the U.S. standards-setting system depends on
continued private sector leadership and engagement.
– OMB Circular A-119 remains the primary strategy for governmental
involvement in standards development.
• This circular encourages U.S. governmental use of and participation in the
development of voluntary industry standards.
– In limited policy areas, the government may need to help
accelerate standards development by: clearly identifying the
standards-based challenges; defining its goals; providing an
analysis of the perceived standards gap and what must be done to
close it; and supporting the technical work to achieve its goals.
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U.S. Government Engagement in
Standards Activities
• Memorandum outlines five (5) fundamental strategic
objectives that should guide its engagement in standards:
1. Produce timely, effective standards and efficient conformity
assessment schemes that are essential to addressing an
identified need;
2. Achieve cost-effective, timely and effective solutions to legitimate
regulatory, procurement and policy objectives;
3. Promote standards and standardization systems that stimulate
and sustain innovation and foster competition;
4. Enhance U.S. growth and competitiveness and ensure nondiscrimination, consistent with international obligations; and
5. Facilitate international trade and avoid the creation of
unnecessary obstacles to trade.
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Incorporation by Reference
• Petition for Rulemaking and Request for Comments,
published February 27, 2012, seeks comment on
whether to amend U.S. regulations governing the
approval of agency requests to incorporate material by
reference (IBR) into the Code of Federal Regulations:
– Does “reasonably available” mean material must be free or
available to anyone online?
– Should agencies bear the cost of making material available?
– Should the Office of the Federal Register have the authority to
deny IBR approval requests if the material is not available online
for free?
– Is OMB better positioned to handle associated policy issues to
determine “reasonable availability”?
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Incorporation by Reference
• ATIS filed comments in response to the Petition/Request
noting that it:
– Publishes numerous standards, technical reports and other
materials, which are copyrighted by ATIS and made publically
available through a variety of sources.
• Some of these deliverables are IBR, including industry
numbering and emergency alerting standards.
– Takes a flexible approach to the availability of its deliverables,
making some available at no-cost to the public while assessing a
charge to non-members for other documents.
• Federal, state and local government agencies, upon request,
may obtain at no-cost copies for internal use.
– Has experienced no instance where access to its materials has
been problematic, whether for reasons of cost or otherwise.
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U.S. Government Use of
Voluntary Industry Standards
• OMB Request for Information (RFI), published March 30,
2012, seeks comment on a variety of issues related to
governmental use of and participation in standard
setting, including:
– Whether there is a need to update OMB Circular A-119?
– What factors should agencies examine in evaluating whether to
use voluntary non-consensus standards?
– What are the best practices for providing access to standards
incorporated by reference in regulation?
– What costs are involved in the development and/or revision of
standards?
– Should OMB set out Best Practices on how to
reference/incorporate standards in regulation?
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U.S. Government Use of
Voluntary Industry Standards
• ATIS filed comments in response to the RFI:
– Supporting the use of voluntary consensus-based standards;
– Noting that the elimination of Circular A-119’s requirement for
consensus processes would risk the quality and nature of
standardization;
– Supporting Circular A-119’s policy of observing and protecting
the rights of copyright holders for IBR standards;
– Supporting increased governmental outreach and participation in
private standards bodies; and
– Noting that there is no need to revise Circular A-119.
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ATIS Participation in oneM2M
• ATIS is a founding Partner Type 1 in the oneM2M global
initiative, which will develop machine-to-machine service
layer specifications.
• There are different levels/types of participation in oneM2M
(including Partners Type 1, Partners Type 2, and
Members); each has different IPR obligations:
– Partners Type 1 have IPR policies that support a FRAND regime;
– oneM2M members (must be admitted through one or more
Partners Type 1) must abide by the IPR policy of a specific Partner
Type 1; and
– Partners Type 2 must have compatible IPR policy or provide
written assurance that any contributions are made pursuant to a
Partner Type 1 policy, and that its members are bound by such an
IPR policy relative to any Partner Type 2 contribution.
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Supplementary Slides
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Links to ATIS
Public Policy Filings
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• ATIS public policy filings (including those referenced in
this presentation)
– http://www.atis.org/legal/publicpolicy.asp
• ATIS Operating Procedures:
– http://www.atis.org/legal/op.asp
• List of Patent Assurance Statements received by ATIS:
– http://www.atis.org/legal/patentinfo.asp
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