1. Interface between IPRs and Standards How ETSI deals with it
STANDARDISATION
AND INTELLECTUAL PROPERTY RIGHTS
An IPR2 Project Workshop
Beijing, 4 September 2009
Interface between IPRs and Standards
How ETSI deals with it
Margot Dor
Strategic Projects
And Yann Elias
Legal Counsel
ETSI

2. ETSI in one minute http://www.etsi.org
ICT standards organization, based in Sophia Antipolis-South France
Global membership (700+ Members EU and overseas, 80% industry)
Enabler of a few worldwide industrial hits
Staff of 100, supporting +/ industry experts/year
Global network of alliances (regional/technical) e.g.
Founding partner & home of the 3GPP
Major focus on Interoperability/Architecture
CTI IOP engineering & testing for ETSI and other SOs
“Classic and light”, i.e. access/transport layers and service/appli. layers

3. Future Internet (Internet of things)
2 Partnership Projects, 34 Technical Bodies, 80+ WGs
Media delivery
ETSI in the home
Transports
Radio
Future Internet (Internet of things)
« Of mice and men »
Security
IOP and QoE

4. Nobody does it alone Partnerships International Inter regional Europe
IEEE
WIMAX forum
NFC forum
CCSA
CESI
EBU
DVB Project
OMA
CITEL
GSMA
GCF
IPv6 Forum
NENA
TETRA MoU
(70+ active)
ITU-T
ITU-R
ITU-D
JTC1
Inter
regional
GTSC
GRSC
Europe
CEN/
CLC EC
CEPT

5. Early identification and disclosure of essential IPR
ETSI looking for the most advanced and suitable technology for its standard
Duty to disclose in a timely fashion
No requirement to conduct IPR searches
Publication of disclosed IPR in the ETSI IPR Database
No checking of essentiality of the disclosed IPR

6. FRAND Licensing Undertaking
ETSI requesting IPR owner to give undertaking to grant licences under FRAND terms
IPR owner free choice to grant or to refuse FRAND licensing undertaking.
ETSI has got a clear procedure in case of a Non-availability of Licences, e.g. Article 8 of the ETSI IPR Policy
Terms & conditions of the licenses to be determined by the parties of the agreement and outside ETSI
Voluntary, unilateral, public, ex ante disclosures of licensing terms by licensors of essential IPRs is permitted

7. Latest developments in the ETSI IPR Policy
Disclosure and identification related
Patent Family
All documents having at least one priority in common.
Declaration of a specified member of a Patent Family shall apply to all existing and future essential IPRs of that Patent Family issue.
Impact on the licensing undertaking
IPR Declaration Form (
The use of the IPR Licensing Declaration Forms is now mandatory.
DARE Project
Reviewing the current storage and presentation of essential IPR declarations
Enhance transparency of essential IPRs

8. Latest developments of the ETSI IPR Policy
Licensing declaration related:
FRAND licensing undertaking fails to serve purpose if it can be revoked at a later point
Brings legal certainty to the standard adopters
Irrevocability of FRAND licensing undertaking
The transferee shall exercise reasonable efforts to notify the assignee of the FRAND undertaking it has made to ETSI
Transfer of an IPR should not be used to circumvent a FRAND licensing undertaking.
Transfer of Ownership
The incorporation of copyrighted software in a standard or technical specification raises additional issues that need to be considered.
Such Software Copyright Guide will be discussed within the “IPR SC”
Software Copyright Guide
Also

9. Cooperation with other organizations
Agreeing and relying on common rules (standards making grammar)
Transparency of standards development processes, IP governance, work programmes, players involved and rules of the game
Equal opportunities to participate in standards production processes/reciprocity.
Public availability of SDOs’ IPR policies
Equal opportunities to participate in R&D projects (e.g. clause of reciprocity EC funded research projects/ 863 Committee?)
Transparency with regards to IPR dealings when non EU organizations participate in research projects
“Never impose on others what you would not choose for yourself”.
己所不欲、勿施於人

10. First century trade routes