Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All 2011 IN REVIEW: ITU’S ACTIVITIES IN THE FIELD OF STANDARDIZATION & IPR Antoine Dore, Senior Legal Officer, ITU Document No: GSC16-IPR-03 Source: ITU Contact: GSC Session: IPR Agenda Item: 4.2

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 2 A Year in Review Three strategic objectives in 2011: –Review existing IPR Guidelines to better respond to industry needs, and the rapidly changing ICT environment. –Increase the transparency and stability of the system in place in ITU. –Contribute to the debate on the inclusion of patents in standards.

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 An open and transparent review process The ITU decided to engage in an open and transparent review process of its two main Guidelines: –The TSB Director’s IPR AHG was mandated to propose improvements to the Patent Guidelines and Software Copyright Guidelines. ISO/IEC took an active part in the review of the Patent Guidelines. The WSC Patent Task Force was asked to consolidate all inputs, and propose revised Patent Guidelines for approval by the appropriate bodies in ISO, IEC and ITU. 3

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 4 Review of the Patent Guidelines Brief reminder: –Since 2007, ITU/ISO/IEC share a common Patent Policy and common Patent Guidelines. –The purpose of the common Patent Policy is to ensure that patents incorporated into ITU standards are available to everyone without undue constraints.

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Review of the Patent Guidelines Brief Reminder: –The Patent Policy helps ITU manage the risks associated with the inclusion of patents in its standards. –By requiring early disclosure of essential patents and licensing commitments, ITU ensures that no IPR Holder is placed in a position to stop others from complying with its standards, and mitigates patent hold-ups and other similar behaviours. 5

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Review of the Patent Guidelines Four main changes have been introduced in the revised Patent Guidelines: –Definition of Patent has been clarified to address the “essentiality” issue. –The status of the licensing commitment in case of assignment/transfer of patent rights has been clarified. –The general understanding to the effect that licensing commitment cannot be withdrawn or amended (unless more favourable licensing terms are offered) has been reflected in the Guidelines. –To increase legal certainty and transparency, the definition of Patent was also added to the licensing commitment. 6

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Review of the Patent Guidelines The revised Guidelines have been endorsed by the relevant bodies within ITU. The publication and entry into force of the revised Patent Guidelines is pending approval by the relevant bodies within ISO/IEC. The revised Guidelines are expected to enter into force later this year. As per standard practice, they will have no retroactive effect. 7

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Review of Software Copyright Guidelines Brief reminder: –First edition of the Software Copyright Guidelines was developed more than 10 years ago. –At that time, ITU was one of the first standards bodies to have detailed Guidelines on this issue. –It was felt necessary to review these Guidelines in light of the experience both in ITU and in other standards organizations. 8

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 9 Review of Software Copyright Guidelines Review process began in 2010, and continued throughout Once again, an open and transparent review process was put in place: –A Task Group composed of interested parties was set-up to examine the issue. –The mandate of the Task Group included the development of proposals for review by the TSB Director’s IPR AHG at its December 2011 meeting. The Task Group is expected to submit its report within the next few weeks. The TSB Director’s IRP AHG is requested to provide its final recommendations before the end of this year.

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Review of Software Copyright Guidelines Topics currently being discussed within the Task Group include, among others: –How to better describe the issues that arise in connection with the incorporation of software in standards. –What is the right balance between simplicity (the Guidelines are meant to be used by persons not familiar with complex IPR issues) and completeness? –What is the definition of software? (This raises the question of the scope of the Guidelines.) –What types of software do not raise IPR issues? –Is it appropriate to maintain a strong discouragement on the use of software? 10

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR ITU-EPO Collaboration Agreement EPO and ITU have a long history of collaboration. EPO became a member of ITU in Over the years, this collaboration has developed in scope and intensity. In 2011, the collaboration between ITU and EPO took on a new dimension by the signing of an agreement principally aimed at easing the tensions between the patent and standardization systems.

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 ITU-EPO Collaboration Agreement Specific projects aimed at increasing the transparency of the system and the quality of patents being granted will be implemented: –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 and EPO will work together on capacity building activities on IPR and standardization issues. 12

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 Collaboration with other Patent Offices The ITU/EPO collaboration agreement is the latest initiative aimed at addressing the new challenges faced by the patent and standardization systems. ITU is also seeking bilateral cooperation with other Patent Offices. The admission of USPTO as an ITU member is currently being formalized. Similar arrangements with JPO, KIPO, and SIPO will be pursued. 13

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All GSC16-IPR-03 International Workshop ITU and the Indian Government are organizing a workshop on Standards and IPR issues on December 2011, in New Delhi, India. The goal is to provide a forum to discuss current issues relating to the inclusion of patented technology and software in standards. International experts from both the public and private sectors have been invited to provide an overview of the issues and share their insights on present and future developments. 14