ITU WORKSHOP ON STANDARDS AND INTELLECTUAL PROPERTY RIGHTS

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 2

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 3

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 (3 GPP, M 2 M to be set up) Contributing technical standards to support regulation 4 4

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 5

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. 6

Role of 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 7

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. 8

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. 9

Developments of the ETSI IPR Policy (1) Disclosure and identification related: Patent Family IPR Declaration Form 10 • 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 11 • 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 databased on feedback received by users and ETSI members and will implement shortly the first set of evolutions/ enhancements. 12

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. 13

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. 14

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