Activities at ITU in the field of IPR and standards since GSC-17 Antoine Dore, Senior Legal Officer International Telecommunication Union Global Standards Collaboration Session on IPR and standards (Sofia-Antipolis, 20 April 2015)

Outline of the presentation Activities of the TSB Director’s AHG on IPR issues Relationship with Patent Offices Other ITU activities in the field of IPR and standards

Activities of the TSB Director’s AHG on IPR issues (background) The main tool ITU employs to safeguard a fair balance of stakeholder interests is the ITU-T/ITU-R/ISO/IEC Common Patent Policy and related Guidelines agreed in Central to the Common Patent Policy is the principle of SEP holders committing themselves to licensing their SEPs to standards implementers on a Reasonable and Non-Discriminatory (RAND) basis. In October 2012, ITU convened a high-level “Patent Roundtable” to examine the effectiveness of RAND- based patent policies and to discuss whether these policies are in need of reform.

Activities of the TSB Director’s AHG on IPR issues (background) The outcome of the Patent Roundtable saw the IPR AHG mandated to begin an accelerated series of meetings aimed at developing a recommendation to provide high-level principles clarifying: – the meaning of ‘reasonable’ in the RAND context, and – the issue of the availability of injunctive relief in the case of RAND-encumbered SEPs. In addition, the TSB Director requested the IPR AHG to provide a recommendation on the following additional issue: – the “non-discriminatory aspect” of the Patent Policy (i.e. is it possible to treat prospective licensees differently for example by refusing to license some types of standards implementers?).

Work of the TSB Director’s AHG on IPR issues in In , the IPR AHG addressed 4 main issues: – The conditions under which companies that have made RAND commitments should (or should not) be allowed to seek injunction relief: The injunctive relief debate arises in a context where concerns have been expressed that the threat of IR may be used by SEP owners to extract supra-RAND (RAND+) royalties from implementers. – The meaning of the word "reasonable" in RAND: this debate arises in a context where some stakeholders have indicated that providing guidelines for what constitute reasonable licensing terms would be beneficial to the standards ecosystem. – The meaning of non-discrimination in RAND: the non-discrimination issue arises in a context where certain SEP owners have taken the view that prospective licensees could be treated differently, for instance by refusing to license certain types of implementers. – The transfer issue: stakeholders have taken the view that there was a need to strengthen and streamline the current rules regarding the transfer of patents.

Work of the TSB Director’s AHG on IPR issues in Unanimous agreement was reached on one proposed amendment to the Patent Guidelines, as well as the addition of related text to the declaration form, to clarify that the RAND commitment is intended to bind both the patent holder and subsequent purchasers of the patents. This recommendation was further approved by TSAG and RAG in June In February 2015, the ITU proposal on the transfer issue was examined by ISO and IEC. Both organizations decided to: – endorse the transfer principle; – request their respective Secretaries-General to liaise with ITU with a view to developing common language that would be widely understood by ISO/IEC technical experts; – recommend that the Patent Declaration Forms be modified using the text proposed by ITU.

Work of the TSB Director’s AHG on IPR issues in Regarding the three other issues, TSAG requested that discussion should continue in the IPR AHG to try to resolve such issues, and a report be presented to the 2015 session of TSAG on the results achieved. Since the June 2014 TSAG meeting, the IPR AHG has met on three occasions (December 2014, February and April 2015). The discussion has enabled a better understanding of the issue although the IPR AHG was unable to provide a consensus recommendation to the TSB Director. The 2-5 June 2015 TSAG meeting will review the report from the TSB Director on these issues. Member States and Sector Members have been invited to submit contributions as early as possible in advance of the next TSAG meeting with a view towards trying to find consensus.

Relationship with Patent Offices As of 2 nd quarter of 2014, each SEP in the ITU patent database is directly linked to the EPO patent database. In 2014, ITU collaborated with JPO in the context of a JPO report on the utilization of standard related documents for patent examination. ITU and JPO are currently exploring additional opportunities for collaboration.

Other ITU activities in the field of patents and standards In 2013, ITU’s annual Global Symposium for Regulators (GSR) included a session on the interplay between patents and standards The session was attended by more than 600 policy-makers and telecom regulators. In today’s world, the relationship between intellectual property rights, competition law and standardization in the ICT sector was identified as becoming increasingly relevant and important. The need to develop and distribute a manual that would provide a greater understanding on the relationship between ICT innovations, intellectual property and standards was also highlighted.

Other ITU activities in the field of patents and standards A publication entitled “Understanding patents, competition and standardization in an interconnected world” was released by ITU on July 2014.Understanding patents, competition and standardization in an interconnected world The publication provides government officials, private-sector executives and industry analysts of all disciplines with an overview of the state of play in the interrelationship of intellectual property and standardization in the ICT sphere.

Other ITU activities in the field of patents and standards Part I provides an introduction to the conceptual foundations of standardization; the purpose and impact of standardization in the ICT industry and global economy; the composition of the modern ICT standardization landscape; the principles governing standardization processes; and the possible advantages and disadvantages of technical standardization. Part II provides an introduction to patents and the requirements of patentability; the organization of the global patent system, and the challenges it is facing; the general rules and mechanisms in competition law; and how competition law is applied to standards development processes and the inclusion of patents in standards. Part III provides an introduction to SEPs; how RAND-based IPR policies aim to create and protect a fair balance between stakeholders’ varied interests; and the nature of conflict between stakeholders, both from the perspectives of patent owners and standards implementers. Part IV provides an introduction to ITU achievements in global ICT standardization; key principles and provisions of the ITU/ISO/IEC common patent policy; and the differences between the various options for licensing commitments, including reciprocity clauses.

Other ITU activities in the field of patents and standards In December 2015, ITU participated in an OECD review of recent competition issues in the ICT Sector. Four main findings (see Executive Summary of the discussion):Executive Summary – Standards encourage innovation but the incorporation of patents in ICT standards may raise potential for harm to competition. SDOs aim to mitigate these risks in their IPR policies. – Commercial disputes can arise between SEP holders and standards implementers regarding the meaning of RAND. While there is currently no generally-accepted methodology for determining RAND royalties, certain principles are emerging. – The availability of injunctions on RAND-encumbered SEPs may affect licensing negotiations with implementers, leading to holdup. Courts have dealt with these questions in many jurisdictions and competition authorities have intervened in a few cases. – Cooperation between SDOs, patent offices and competition authorities can be useful. SDOs can play an important role in this debate and there is support to continue efforts to clarify SDOs policies on RAND.