TSB 1 Overview of the TSB Director’s Ad Hoc Group on IPR GSC 9, Seoul, Korea, 9 – 1 3 May 2004 by Houlin Zhao Director, Telecommunication Standardization Bureau (TSB) International Telecommunication Union Place des Nations - CH-1211 Geneva 20 – Switzerland Tel: Fax: ITU Web address:

TSB 2 TSB Director’s Ad Hoc Group on IPR Chairman : Mr Houlin Zhao (TSB Director) Members : Open to ITU Member States, Sector Members + invited participants Participants include : AT&T, BT, France Télécom, Fujitsu, HP, Intel, KDDI, Lucent, Nortel Networks, NTT, Polycom, Psytechnics, Siemens, ANSI, ETSI, ISO, ETRI, TTC, etc. Meetings : last meeting 7-8 November 2003 next meeting 9-10 July 2004 About the IPR Ad Hoc Group: (

TSB 3 1.Definition/clarification of “reciprocity” The Ad Hoc Group provisionally agreed that: -reciprocity relates only to “essential” patents in the same Recommendation; - a free licence is granted if a reciprocating patent holder is willing to grant a free licence in return; - a RAND licence is granted if a reciprocating patent holder is willing to grant a RAND licence in return. Proposed wording for the patent declaration forms and Patent Guidelines   “Reciprocity” signifies that the patent holder shall be required to license any prospective licensee only where the latter will commit to license its essential patent(s) or essential patent claim(s) for implementation of the same ITU- T Recommendation free of charge or under reasonable terms and conditions. Patent policy issues

TSB 4 Definition/clarification of “reciprocity” (continued) The Ad Hoc Group agreed provisionally on the introduction of a new box “1bis” in the patent declaration forms:   1bis. The Patent Holder is prepared to grant – on the basis of reciprocity for the above ITU-T Recommendation – a free licence to an unrestricted number of applicants on a worldwide, non- discriminatory basis, and on other reasonable terms and conditions, to make, use and sell implementations of the above ITU-T Recommendation. However, in the case of applicants holding valid patents and/or pending applications whose use would require implementation of the above ITU-T Recommendation and select box 2 below, the patent holder restricts its offer to license such parties to the terms of box 2 below. Patent policy issues (continued)

TSB 5 free 2.Definition of “free”   Proposed definition The word “free” does not mean that the patent holder is waiving all of its rights with respect to the essential patent. Rather, “free” refers to the question of monetary compensation; i.e. the Patent Holder will not seek any monetary compensation as part of the licensing arrangement (whether such compensation is called a royalty, a one-time licensing fee, etc.). However, while the patent holder in this situation is committing itself to not charging any monetary amount, the patent holder is still entitled to require that the implementer of the Recommendation sign a licence agreement containing other reasonable terms and conditions relating, for example, to governing law, field of use, reciprocity, warranties, etc. Patent policy issues (continued) The Ad Hoc Group agreed provisionally on the following proposed definition used in patent declaration forms and patent guidelines:

TSB 6 Definition of “free” (continued) The Ad Hoc Group agreed in principle to modify the wording of Option 1 in the Patent Licensing Declaration Form  P  Proposed wording for Option 1: The Patent Holder is prepared to grant – on the basis of reciprocity for the above ITU-T Recommendation – a free licence to an unrestricted number of applicants on a worldwide, non-discriminatory basis, and under other reasonable terms and conditions, to make, use and sell implementations of the above ITU-T Recommendation. The Negotiation of licences under Option 1 is left to the parties concerned and takes place outside ITU-T. (the underlined words are proposed for addition to the existing Option 1) Patent policy issues (continued)

TSB 7 3.Other patent-related issues for further discussion - Application of the ITU-T patent policy to appendices or other informative parts of ITU-T Recommendations -Handling of normative referenced text developed by other organizations - Disclosure of any actual knowledge of essential patents by other parties. By which statement form? Need a new separate form for the patent licensing declaration ? Is the general patent statement not sufficient? Patent policy issues (continued)

TSB 8 4.Software Copyright Guidelines Issues for further discussions: -Other than under Option 1.1 (i.e. under 1.2, 1.3, 1.4 and 2), a licence statement for certain uses (i.e. software evaluation) of the software free of charge and without the need for a licence from the holder -Copyright notices for software used for conformance testing -Copyright notices for software developed in open collaboration between ITU-T members (possibly also in collaboration with ISO/IEC JTC1) i.e. ITU-T Recommendation H Consideration of issues arising from the participation of invited experts in relevant ITU-T meetings -Copyright notices for reference software Software copyright issues Issue 2.1 of the Software Copyright Guidelines (February 2003) remains in effect for use on an ongoing trial basis.

TSB 9 5.Trademarks 5.1 Problems raised Some Study Groups have been confronted with issues relating to the inclusion of trademarks in ITU-T Recommendations. - A company complained about ITU’s use of the trademark “REACHDSL”, registered by the company, in ITU-T Recommendations G.982 and G ITU-T Recommendation P.862 containing the term “perceptual evaluation of speech quality (PESQ)” the trademark in respect of which belongs to the company. It was reported that the company has taken action in regard to its ownership of “PESQ” as a trademark. Study Groups also made comments to the effect that:   Some members do not wish to restrict the legitimate use of the relevant Recommendation on account of the trademarks - Trademarks in ITU-T Recommendations unfairly promote the company holding the trademark - The IPR Ad Hoc Group should develop guidance on trademarks in the context of ITU-T Recommendations Trademarks

TSB Approaches adopted by the IPR Ad Hoc Group - Collection of more background information for specific cases - Collection of general information and study of practice in other organizations such as: WIPO (World Intellectual Property Organization), WHO (World Health Organization), ETSI, etc. - Setting up of an editor group for drafting the Guidelines - Preparation of a first draft for the next meeting in July 2004 Trademarks (continued)

TSB Possible list of topics in the Guidelines 1. Abstract 2. Introduction - statement of purpose - short summary of relevant aspects of trademarks 3. General consideration - general discouragement of the inclusion of trademarks in ITU-T Recommendations unless circumstances justify it, together with some rationale 4.Different ways in which trademark issues arise, and issues that the Study Groups should consider: a)Use of the proper name of a company (pointing to that company’s products or services) and the inclusion of commercial terms Trademarks (continued)

TSB 12 Possible list of topics in the Guidelines (continued) b) A trademark (an acronym or other “buzzword”) - Whether ITU-T should have a “policy” against its members seeking to register any such possible trademarks - Circumstances – if any – under which ITU-T would undertake to register trademark c) Cases in which a trademark right would legitimately lie with an ITU-T member or non-member as a proprietary right. (Are there any possible non-infringing ways to include the trademark in the Recommendation?) d) ITU-T’s use of trademarks which belong to other standard-setting bodies e) Other Trademarks (continued)

TSB Interim solution for specific cases The relevant Study Groups are requested to discuss at their next meeting whether the statement provided by the trademark holders can be accepted: - P.862 “The company will neither restrict the use of the term PESQ nor require the use of any trademark symbols or statements in association with the term PESQ when used in relation to objective speech quality models that conforms to ITU-T Recommendation P.862. ” - J.series Recommendations including trademarks “The company will neither restrict nor require a royalty payment for the use of its trademarks "DOCSIS", "PACKETCABLE" or "CABLEHOME“ in any ITU Recommendations.” Since these terms refer to technical specifications, it is proposed to provide the URL associated with the relevant specifications instead of pointing out that the terms are the trademarks of the company in question. Trademarks (continued)

TSB 14 Non-members: 213 (17%) Option 2: 1,160 93% Members: 1,038 (83%) Option 1: 90 (7%) Option 3: 1 Patent statements received: 1,251 (as of 25 March 2004)

TSB 15 Newly-available ITU-T website - IPR Ad Hoc Group common FTP area: IPR Ad Hoc Group common FTP area: - Available to ITU-T members and non-ITU-T members involved in IPR matters to enable their participation in this ITU activity. ( To use these facilities it is necessary to subscribe.) - Contributions and working documents for use at IPR Ad Hoc Group meetings, and - IPR Ad Hoc Group messages exchanged through the group. Links to IPR-related site in forums and consortia: Links to IPR-related site in forums and consortia: At the last Informal Forum Summit (July 2003), it was agreed to communicate new work areas and ongoing activities, including IPR issues, to forums, ITU-T and SDOs.Informal Forum Summit ITU-T website