1. Update on SDO IPR Policy Debates
Dirk Weiler
Chairman of the Board and the IPR Special Committee, ETSI
IBC Standards Patents & Competition: Law and Litigation
London, 1st December 2015
© ETSI All rights reserved

2. IEEE - Developments since last December
15th March 2015 – Updated IEEE-SA Standards Board Bylaws
Significant changes implemented
Similar proposals have not been accepted in ITU and ETSI
ETSI in general is not discussing IPR policies of other organizations
In preparation of a cooperation agreement or a partnership project with another organization ETSI is checking the IPR policy compatibility
The ETSI secretariat is responsible for determining such compatibility
ETSI has determined that the IEEE IPR policy is not compatible with ETSI’s and oneM2M’s IPR policies
Reasons for incompatibility:
The Smallest Saleable Unit (SSU) has been introduced
Injunctions are more or less impossible to trigger
Commercial discussions between members have to take place outside ETSI

3. ITU - Developments since last December
TSB Director’s Ad Hoc Group on IPR met four times: Dec / Feb / Apr / Sep
Assignment or Transfer of Patent Rights
The Common Patent Policy for ITU-T/ITU-R/ISO/IEC has been amended to properly address this topic
On-going discussions about 3 topics :
Injunctive relief (availability, limitations, conditions, … )
Presentations in September 2015 by Professor Nicolas Petit (ULg) and by Gunnar Wolf (DG COMP) on Huawei v ZTE ruling (CJEU C-170/13, 16/7/2015)
Meaning of Reasonable in RAND
Non-Discrimination issue (who is entitled to a license under the ITU Patent Policy)
No agreement reached on changes to the Policy, split views whether to continue the discussions about changes or close these topics as no consensus seems possible : Director indicated to lower the priority
2 New high priorities : Transparency of SEP Declarations and Open Source

4. ETSI - Developments since last December
ETSI General Assembly in March 2015 discussed the incompatibility of the IEEE IPR policy with ETSI and oneM2M IPR policies
ETSI IPR special committee met three times: Jan / May / Oct
On average 74 participants in the 14 meetings since 2012
Continued discussions about FRAND / reciprocity / injunctive relief
Started discussion on SEP Declaration transparency topics

5. ETSI policy discussion: FRAND
Should ETSI provide guidelines/principles for compensation elements under the FRAND commitment ?
The meetings continued the discussions without any consensus outcome
Some proposals were repeatedly presented and discussed with very similar arguments, but not accepted
A new proposal in the last meeting to close the discussion on FRAND for the time being was not accepted in this meeting

6. ETSI policy discussion: Reciprocity
Should ETSI consider the scope of any option that a FRAND undertaking provided in accordance to Clause 6.1 of the ETSI IPR Policy may be made subject to the condition that those who seek licenses agree to reciprocate?
No consensus was achieved to further specify reciprocity
Topic remains open

7. ETSI policy discussion: Injunctive Relief
Should ETSI define under which conditions a patent owner will refrain from pursuing injunctive relief (including an order of exclusion or similar prohibition on importation)? (such conditions may pertain to the conduct of either or both licensees and licensors.)
Topic was on standby until new developments
On 16th July 2015 the CJEU decided on the Huawei/ZTE case
Presentations were given during the Oct meeting by
Nicolas Petit, Professor of Competition Law at the University of Liège
Gunnar Wolf, DG COMP, European Commission
Peter Meier-Beck, presiding Judge of the German Federal Court of Justice's patent senate
The meeting had a lively discussion with the three presenters
Again a proposed text to address the topic in the policy was not accepted
A new proposal to close the discussion on Injunctive Relief for the time being was not accepted in this meeting
The European Commission expressed support in stopping the current discussion on injunctive relief and concentrating on SEP Declaration transparency issues

8. ETSI: Increase Transparency (1)
Discussions around SEP Declaration transparency continued
The European Commission provided proposals to increase transparency, based on a preliminary analysis of the answers to the public consultation “Patents and Standards, A modern framework for standardisation involving intellectual property rights”
A set of Actions were agreed and worked on during 2015 (see next slide)
The ETSI secretariat provided some detailed analysis of SEP Declarations and the online IPR database application
2011
2012
2013
2014
2015 (Q1/Q2/Q3)
Number of declarations
141
145
181
199 79
Number of Patent Families
2620
2687
2125
2399
871

9. Increase Transparency (2)
A set of Actions were agreed and worked on during 2015
Continue reducing the number of un-normalised data in the DB
Increase awareness of SMEs
Automatically import further patent information via the EPO (e.g. patent grant, validity, expiration)
Independent 3rd party essentiality checks
Review declarations after adoption of the standard
Notify ETSI of transfers of ownership
Consistency and naming of ETSI projects
Require standard number and illustrative specific part of the standard in the declaration form
These actions are still work in progress and under discussion

10. Outlook
ETSI will continue constructive discussions on transparency – the next meeting in 2016 will be dedicated to this topic
The discussions on the three topics FRAND, reciprocity and injunctive relief have been very helpful to improve the understanding of members, regulators, and invited observers (like judges, other SDOs, patent offices) during the last four years
New external events may lead to further information sharing, possible new contributions and further discussions
IPR SC members have very diverging views on the need to continue discussing these topics, as well as the expected outcome of such discussions

11. © ETSI 2015. All rights reserved
Contact
Dirk Weiler: ETSI: ETSI IPR:
Thank you!
© ETSI All rights reserved