UPDATE ON SDO IPR POLICY DEBATES Dirk Weiler

UPDATE ON SDO IPR POLICY DEBATES Dirk Weiler Chairman of the Board and the IPR Special Committee, ETSI IBC Standards Patents & Competition: Law and Litigation London, 1 st December 2015 © ETSI 2015. All rights reserved

IEEE - Developments since last December 15 th March 2015 – Updated IEEE-SA Standards Board Bylaws Significant changes implemented Similar proposals have not been accepted in ITU and ETSI in general is not discussing IPR policies of other organizations In preparation of a cooperation agreement or a partnership project with another organization ETSI is checking the IPR policy compatibility The ETSI secretariat is responsible for determining such compatibility ETSI has determined that the IEEE IPR policy is not compatible with ETSI’s and one. M 2 M’s IPR policies Reasons for incompatibility: • The Smallest Saleable Unit (SSU) has been introduced • Injunctions are more or less impossible to trigger • Commercial discussions between members have to take place outside ETSI 2

ITU - Developments since last December TSB Director’s Ad Hoc Group on IPR met four times: Dec / Feb / Apr / Sep Assignment or Transfer of Patent Rights • The Common Patent Policy for ITU-T/ITU-R/ISO/IEC has been amended to properly address this topic On-going discussions about 3 topics : • Injunctive relief (availability, limitations, conditions, … ) • Presentations in September 2015 by Professor Nicolas Petit (ULg) and by Gunnar Wolf (DG COMP) on Huawei v ZTE ruling (CJEU C-170/13, 16/7/2015) • Meaning of Reasonable in RAND • Non-Discrimination issue (who is entitled to a license under the ITU Patent Policy) No agreement reached on changes to the Policy, split views whether to continue the discussions about changes or close these topics as no consensus seems possible : Director indicated to lower the priority 2 New high priorities : Transparency of SEP Declarations and Open Source 3

ETSI - Developments since last December ETSI General Assembly in March 2015 discussed the incompatibility of the IEEE IPR policy with ETSI and one. M 2 M IPR policies ETSI IPR special committee met three times: Jan / May / Oct On average 74 participants in the 14 meetings since 2012 Continued discussions about FRAND / reciprocity / injunctive relief Started discussion on SEP Declaration transparency topics 4

ETSI policy discussion: FRAND Should ETSI provide guidelines/principles for compensation elements under the FRAND commitment ? The meetings continued the discussions without any consensus outcome Some proposals were repeatedly presented and discussed with very similar arguments, but not accepted A new proposal in the last meeting to close the discussion on FRAND for the time being was not accepted in this meeting 5

ETSI policy discussion: Reciprocity Should ETSI consider the scope of any option that a FRAND undertaking provided in accordance to Clause 6. 1 of the ETSI IPR Policy may be made subject to the condition that those who seek licenses agree to reciprocate? No consensus was achieved to further specify reciprocity Topic remains open 6

ETSI policy discussion: Injunctive Relief Should ETSI define under which conditions a patent owner will refrain from pursuing injunctive relief (including an order of exclusion or similar prohibition on importation)? (such conditions may pertain to the conduct of either or both licensees and licensors. ) Topic was on standby until new developments On 16 th July 2015 the CJEU decided on the Huawei/ZTE case Presentations were given during the Oct meeting by Nicolas Petit, Professor of Competition Law at the University of Liège Gunnar Wolf, DG COMP, European Commission Peter Meier-Beck, presiding Judge of the German Federal Court of Justice's patent senate The meeting had a lively discussion with the three presenters Again a proposed text to address the topic in the policy was not accepted A new proposal to close the discussion on Injunctive Relief for the time being was not accepted in this meeting The European Commission expressed support in stopping the current discussion on injunctive relief and concentrating on SEP Declaration transparency issues 7

ETSI: Increase Transparency (1) Discussions around SEP Declaration transparency continued • The European Commission provided proposals to increase transparency, • • based on a preliminary analysis of the answers to the public consultation “Patents and Standards, A modern framework for standardisation involving intellectual property rights” A set of Actions were agreed and worked on during 2015 (see next slide) The ETSI secretariat provided some detailed analysis of SEP Declarations and the online IPR database application Number of declarations Number of Patent Families 8 2011 2012 141 145 2620 2687 2013 2014 181 199 2125 2399 2015 (Q 1/Q 2/Q 3) 79 871

Increase Transparency (2) A set of Actions were agreed and worked on during 2015 • Continue reducing the number of un-normalised data in the DB • Increase awareness of SMEs • Automatically import further patent information via the EPO (e. g. patent • • • grant, validity, expiration) Independent 3 rd party essentiality checks Review declarations after adoption of the standard Notify ETSI of transfers of ownership Consistency and naming of ETSI projects Require standard number and illustrative specific part of the standard in the declaration form These actions are still work in progress and under discussion 9

Outlook ETSI will continue constructive discussions on transparency – the next meeting in 2016 will be dedicated to this topic The discussions on the three topics FRAND, reciprocity and injunctive relief have been very helpful to improve the understanding of members, regulators, and invited observers (like judges, other SDOs, patent offices) during the last four years New external events may lead to further information sharing, possible new contributions and further discussions IPR SC members have very diverging views on the need to continue discussing these topics, as well as the expected outcome of such discussions 10