1. Jeju, 13 – 16 May 2013Standards for Shared ICT Latest legal developments within ETSI Christian Loyau ETSI Legal Director Document No: GSC17-IPR-04 Source: ETSI Contact: Christian Loyau GSC Session: IPR Agenda Item: 4.4

2. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT 2 Background Main Characteristics of ETSI IPR Policy Focus on the most suitable technology for the standards. Early identification and disclosure of essential IPRs, especially in cases where the holder of essential IPR is not prepared to grant licences under FRAND terms and conditions. Ensuring the future applicability of the standards in full respect of the rights of the IPR owner by requesting irrevocable FRAND licensing undertaking. No involvement of ETSI in any commercial discussion on IPR matters (i.e., terms and conditions of the licenses to be determined by the parties of the agreement). Voluntary, unilateral, public ex ante disclosures of licensing terms for the sole purpose of assisting members in making informed (unilateral and independent) decisions in relation to whether solutions best meet the technical objectives, are not prohibited under the ETSI IPR Policy. In this context, ETSI provides a depository for URLs of IPR owners, which contain the relevant information.

3. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT ETSI IPR Online Database The current ETSI IPR Database went live in March 2011 at: http://ipr.etsi.org/ and allows online IPR declarations. http://ipr.etsi.org/ Evolutions/enhancements mainly based on feedback received from users, are being implemented (e.g., Pre-selected Projects are available as suggestions, disclosures can be created from previous ones). The ETSI IPR Online database is increasingly used, including by non- Members and by companies that were used to using the IPR Licensing Declaration forms in paper form. “Dynamic Reporting” provides access to information on the relationship between patented technologies and standards. Snapshot Content (April 2013): 187403 Patents equalling approximately 12635 Patent Families have been declared as being essential to 384 ETSI Projects and/or 6144 ETSI Standards by 212 Declaring Companies through 1373 IPR licensing declarations. 3

4. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT IPR (software & patents) Guidelines IPR (software & patents) Guidelines The following approach has been incorporated into the ETSI IPR Policy modifications and IPR Guide at GA#58 in November 2011: (a)In general, there shall be no requirement to use software incorporated in an ETSI Standard or Technical Specification in order for an implementation to conform to this Standard or Technical Specification (exceptions: data/ stream structures & conformance testing); (b)The copyright license as defined in the ETSI IPR Policy for contributed software shall come “automatically” on a royalty-free basis whenever copyright-protected software is contributed “silently,” but the option exists at the contributor’s discretion at the time of contribution to give an irrevocable FRAND licensing undertaking instead; (c)The basic principle of the ETSI IPR regime remains FRAND. 4

5. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Ongoing policy discussions within the ETSI IPR SC (1) In response to the needs of ETSI members, and the ICT industry in general, the ETSI IPR Special Committee (IPR SC) has embarked in discussions on the following topics: FRAND: Should ETSI provide guidelines/principles for compensation elements under the FRAND commitment ? 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 ? 5

6. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Ongoing policy discussions within the ETSI IPR SC (2) 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.) Transfer of a Patent Subject to a FRAND Licensing Commitment: Recognizing the statement made by the EC in paragraph 285 of its Horizontal Cooperation Agreement Guidelines expressing a preference for a “requirement on all participating IPR holders who provide such a commitment to ensure that any company to which the IPR owner transfers its IPR (including the right to license that IPR) is bound by that commitment, for example, through a contractual clause between buyer and seller,” At GA#61 in March 2013 ETSI has adopted changes in the IPR Policy in-line with requirements of many stakeholders; all successors-in-interest are bound by the FRAND Commitment. 6

7. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Text on Transfer of a Patent Subject to a FRAND Licensing Commitment: 6.1bisTransfer of ownership of ESSENTIAL IPR FRAND licensing undertakings made pursuant to Clause 6 shall be interpreted as encumbrances that bind all successors-in-interest. Recognizing that this interpretation may not apply in all legal jurisdictions, any Declarant who has submitted a FRAND undertaking according to the POLICY who transfers ownership of ESSENTIAL IPR that is subject to such undertaking shall include appropriate provisions in the relevant transfer documents to ensure that the undertaking is binding on the transferee and that the transferee will similarly include appropriate provisions in the event of future transfers with the goal of binding all successors-in-interest. The undertaking shall be interpreted as binding on successors-in-interest regardless of whether such provisions are included in the relevant transfer documents. 7

8. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Ongoing policy discussions within the ETSI IPR SC (3) Changes to the IPR Guide reflecting the transfer topic are continued to be discussed. In addition to these topics ETSI has started to investigate further if voluntary Mediation/Arbitration can help parties to solve disputes, without ETSI being directly involved as Mediator/Arbitrator. ETSI acknowledges the complex structures in which the IPR policy is used and therefore involves additional stakeholders into the discussions, e.g. WIPO, a prominent UK judge and arbitrator on Mediation/Arbitration, or the presiding judge of the responsible Senate of the German Federal High Court on injunctive relief. 8

9. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT TruePosition ETSI has been dismissed as a party to the TruePosition case. 3GPP has now finally been made a part of the TruePosition case and the 3GPP’s Motion To Dismiss the amended complaint was due 15 August, with True Position’s opposition to 3GPP’s Motion To Dismiss due 5 September and 3GPP's response to True Position opposition due 19 September. Discovery phase is pending and should end by mid-2014. 9

10. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Hague Convention ETSI is noting an increasing number of requests to provide information for use in foreign litigation (mainly in the US). According to the application of article 1bis of French law n°68-678 of July 26, 1968 modified by law n°80-538 of July 16, 1980 on the communication of economic, commercial, or technical documents or information to foreign individuals or legal entities (called the “French Blocking Statute”), ETSI can only answer these requests if they are made in line with the Hague Convention of March 18, 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters (“Hague Convention”). Taking into account that ETSI is an organization counting more than 700 members, ETSI will not accept requests made pursuant to Chapter II of the Hague Convention (i.e., voluntary provision of information by ETSI), as it would jeopardize ETSI’s “neutral position” in litigation cases involving one of its members. Therefore, ETSI only welcomes requests made pursuant to Chapter I of the Hague Convention. 10

11. GSC17-IPR-04 GSC-17, Jeju / Korea Standards for Shared ICT Conclusions The ETSI IPR Policy is one of the key elements for the success of ETSI’s globally-applicable standards. Providing access in a transparent fashion to IPRs being declared as essential to ETSI Standards and Technical Specifications is a basic element in the framework of the ETSI IPR Policy. ETSI is facing new challenges and is fully prepared to adapt/clarify its Tools and Directives to meet the requirements of a changing environment, where necessary. ETSI's IPR SC vision is to be "The PLACE" where all stakeholders in standardization can openly discuss IPR related issues ! 11