Summary of GSC-16 IPR WG Meeting 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

Meeting Overview Six organizations presented Contributions, primarily to share new information: 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

ETSI Contribution 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

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

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the new owner to the original licensing commitment has been clarified Clarified that a licensing commitment cannot be withdrawn or amended (absent a more favourable licensing commitment) Proposed revisions to the Software Copyright Guidelines - topics being discussed include: The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

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

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

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, one-size-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.”

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/horizontal.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.

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.

EPO Contribution Achievements: Goals: 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

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

ATIS Contribution 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

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”

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”

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

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