Interface between IPRs and Standards How ETSI deals with it STANDARDISATION AND INTELLECTUAL PROPERTY RIGHTS An IPR2 Project Workshop Beijing, 4 September 2009 Interface between IPRs and Standards How ETSI deals with it Margot Dor Strategic Projects And Yann Elias Legal Counsel ETSI

ETSI in one minute http://www.etsi.org ICT standards organization, based in Sophia Antipolis-South France Global membership (700+ Members EU and overseas, 80% industry) Enabler of a few worldwide industrial hits Staff of 100, supporting +/- 5000 industry experts/year Global network of alliances (regional/technical) e.g. Founding partner & home of the 3GPP Major focus on Interoperability/Architecture CTI IOP engineering & testing for ETSI and other SOs “Classic and light”, i.e. access/transport layers and service/appli. layers http://www.etsi.org

Future Internet (Internet of things) 2 Partnership Projects, 34 Technical Bodies, 80+ WGs Media delivery ETSI in the home Transports Radio Future Internet (Internet of things) « Of mice and men » Security IOP and QoE

Nobody does it alone Partnerships International Inter regional Europe IEEE WIMAX forum NFC forum CCSA CESI EBU DVB Project OMA CITEL GSMA GCF IPv6 Forum NENA TETRA MoU (70+ active) ITU-T ITU-R ITU-D JTC1 Inter regional GTSC GRSC Europe CEN/ CLC EC CEPT

Early identification and disclosure of essential IPR ETSI looking for the most advanced and suitable technology for its standard Duty to disclose in a timely fashion No requirement to conduct IPR searches Publication of disclosed IPR in the ETSI IPR Database No checking of essentiality of the disclosed IPR

FRAND Licensing Undertaking ETSI requesting IPR owner to give undertaking to grant licences under FRAND terms IPR owner free choice to grant or to refuse FRAND licensing undertaking. ETSI has got a clear procedure in case of a Non-availability of Licences, e.g. Article 8 of the ETSI IPR Policy Terms & conditions of the licenses to be determined by the parties of the agreement and outside ETSI Voluntary, unilateral, public, ex ante disclosures of licensing terms by licensors of essential IPRs is permitted

Latest developments in the ETSI IPR Policy Disclosure and identification related Patent Family All documents having at least one priority in common. Declaration of a specified member of a Patent Family shall apply to all existing and future essential IPRs of that Patent Family issue. Impact on the licensing undertaking IPR Declaration Form (http://www.etsi.org/WebSite/document/Legal/IPRforms.doc) The use of the IPR Licensing Declaration Forms is now mandatory. DARE Project Reviewing the current storage and presentation of essential IPR declarations Enhance transparency of essential IPRs

Latest developments of the ETSI IPR Policy Licensing declaration related: FRAND licensing undertaking fails to serve purpose if it can be revoked at a later point Brings legal certainty to the standard adopters Irrevocability of FRAND licensing undertaking 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. Transfer of Ownership The incorporation of copyrighted software in a standard or technical specification raises additional issues that need to be considered. Such Software Copyright Guide will be discussed within the “IPR SC” Software Copyright Guide Also

Cooperation with other organizations Agreeing and relying on common rules (standards making grammar) Transparency of standards development processes, IP governance, work programmes, players involved and rules of the game Equal opportunities to participate in standards production processes/reciprocity. Public availability of SDOs’ IPR policies Equal opportunities to participate in R&D projects (e.g. clause of reciprocity EC funded research projects/ 863 Committee?) Transparency with regards to IPR dealings when non EU organizations participate in research projects “Never impose on others what you would not choose for yourself”. 己所不欲、勿施於人

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