1. Successfully addressing the new challenges
The ETSI IPR Policy
Successfully addressing the new challenges
Dr. Michael Fröhlich
Legal Affairs Director  Attorney-at-law
Copyright © All rights reserved.
GSC IPR Workshop: GSC13-IPR-12
GSC-13  Boston, July 2008
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2. Table of content Introduction Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

3. Introduction Topics under critical scrutiny Conclusion
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

4. Main characteristics of ETSI IPR Policy (refresher)
No technical reservation for the inclusion of IPRs in standards
Early identification and disclosure of essential IPRs
Ensuring the future applicability of the standards in full respect of the rights of the IPR owner by requesting FRAND licensing declaration
Holders of essential IPRs are entitled (but not required) to make 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
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)
GSC IPR Workshop
GSC-13  Boston, July 2008

5. ETSI IPR Special Committee (IPR SC)
In 2006 ETSI IPR Review ad hoc group (IPR R AHG) recommended to the ETSI General Assembley the creation of a permanent IPR Special Committee (IPR SC)
ToR of IPR SC:
IPR SC under the responsability of the GA
functions are purely consultative
to provide advice with regard to IPR related issues when requested 
to assess, elaborate and propose necessary changes to the IPR Policy and IPR Guide resulting from requests from the Director-General, General Assembly, and ETSI Board, as appropriate
IPR SC shall not be active on a regular basis but shall be activated in cases where the Chairman finds that urgent
IPR SC shall make use of electronic document handling tools and electronic meeting facilities to the best extent possible
Karsten Meinhold (Nokia Siemens Networks) has been appointed as Chairman by the IPR SC and the IPR SC elected Serena Tierney (Telefonica Europe plc) as Vice-Chairman
GSC IPR Workshop
GSC-13  Boston, July 2008

6. Activation of the IPR SC
IPR SC activated December 2007 in order to discuss several pending items, to find solutions for them and give advice on how to handle them.
Topics under critical scrutiny are:
Disclosure and IPR undertaking/licensing declarations with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Irrevocability of IPR undertaking/licensing declarations
Continuity of IPR undertaking/licensing declaration when ownership of a Patent that is subject to such undertaking/licensing is transferred
4 meetings held already; participants/meeting
Meeting #5 scheduled on Sept ‘08
Decisions made so far are all based on consensus
GSC IPR Workshop
GSC-13  Boston, July 2008

7. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

8. Patent Families
Need has been identified to modify/clarify ETSI procedures and guidelines to further address patent family information
unclear, if obligation to disclose is requiring the identification of all essential IPRs (i.e. including all members of a patent family) or if disclosure of an essential IPR is sufficient (i.e. one family member)
also implication for FRAND licensing declaration are unclear
notion of Patent Family is unclear, and requirements as to how information on Patent Family has to be provided are missing
Recommendation of the IPR SC (to be endorsed by GA#52 – 25/26 Nov ’08):
GSC IPR Workshop
GSC-13  Boston, July 2008

9. Definition New Clause 15.13 ETSI IPR Policy:
“PATENT FAMILY” shall mean all the documents having at least one priority in common, including the priority document(s) themselves. For the avoidance of doubt, “documents” refers to patents, utility models, and applications therefor.”
Family P1
Family P2
Family P3
Document D1
Priority P1
Document D2
Priority P2
Document D3
Document D4
Priority P3
Document D5
GSC IPR Workshop
GSC-13  Boston, July 2008

10. Disclosure
Obligation is met with the disclosure of one member of a patent family. Disclosure of other patent members is voluntary
New Clause 4.3 ETSI IPR Policy:
“The obligations pursuant to Clause 4.1 above are deemed to be fulfilled in respect of all existing and future members of a PATENT FAMILY if ETSI has been informed of a member of this PATENT FAMILY in a timely fashion. Information on other members of this PATENT FAMILY, if any, may be voluntarily provided.”
GSC IPR Workshop
GSC-13  Boston, July 2008

11. FRAND licensing declaration
Presumption that a FRAND licensing declaration with regard to one disclosed member of a patent family extents to all existing and future members of that patent family
IPR holders have the possibility to specify upfront (i.e. at the time the FRAND licensing declaration is made) which members of the patent family are excluded from the FRAND-commitment
New Clause 6.2 ETSI IPR Policy:
“An undertaking pursuant to Clause 6.1 with regard to a specified member of a PATENT FAMILY shall apply to all existing and future ESSENTIAL IPRs of that PATENT FAMILY unless there is an explicit written exclusion of specified IPRs at the time the undertaking is made. The extent of any such exclusion shall be limited to those explicitly specified IPRs.”
GSC IPR Workshop
GSC-13  Boston, July 2008

12. Consequences of upfront exclusion
Clause 8 ETSI IPR Policy to be initiated in all cases of refusal regardless of appurtenance to patent family
Modified Section ETSI Guide on IPRs:
“Where an the IPR undertaking/licensing declaration as provided in Clause 6 of the ETSI IPR Policy cannot be obtained because of the refusal by the essential IPR owner, the ETSI Secretariat is obliged to initiate the procedure set out in Clause 8 of the ETSI IPR Policy. For the avoidance of doubt with regard to PATENT FAMILIES, the ETSI Secretariat is obliged to initiate a procedure of Clause 8 of the ETSI IPR Policy in every case where the IPR owner refuses to give the IPR undertaking/licensing declaration as provided in Clause 6 of the ETSI IPR Policy for at least one member of a PATENT FAMILY regardless of the fact that the IPR owner might have given such IPR undertaking/licensing declaration for other members of the same PATENT FAMILY.”
GSC IPR Workshop
GSC-13  Boston, July 2008

13. Other clarifications New Section 2.1.2 ETSI Guide on IPRs:
“The deemed fulfilment in Clause 4.3 of the IPR Policy of the obligations pursuant to Clause 4.1 in respect of all existing and future members of a PATENT FAMILY is only applicable to the extent that the IPR owner has the right to make the IPR undertaking/licensing declaration pursuant to Clause 6.1 of the ETSI IPR Policy as to members of the PATENT FAMILY at the date of the IPR information statement and licensing declaration.
For the purpose of the disclosure made under Clause 4, the patent owner may consider any part of an IPR document, in particular the description, the claims and the drawings.”
GSC IPR Workshop
GSC-13  Boston, July 2008

14.  Essential, but not yet applied for
(i.) Disclosure Let’s say there will be 5 patents (all being part of one patent family)
 3rd party IPR
 Essential, but not yet applied for
 Essential D3 D4 D2
 Essential D5
disclosure
voluntary
disclosure
voluntary
 Essential
disclosure
voluntary D1
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
With disclosure of D1 the requirement to inform ETSI of essential IPR in a timely fashion is deemed to be fulfilled.
GSC IPR Workshop
GSC-13  Boston, July 2008

15.  Essential, but not yet applied for
(ii.) IPR undertaking/licensing declaration Let’s say there are 5 patents (all being part of one patent family)
FRAND
FRAND
 3rd party IPR
FRAND
 Essential, but not yet applied for
 Essential D3 D4
FRAND D2
 Essential D5
disclosure
voluntary
disclosure
voluntary
 Essential
disclosure
voluntary D1
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
Yes, give FRAND-undertaking
ETSI
Request FRAND-undertaking
GSC IPR Workshop
GSC-13  Boston, July 2008

16.  Essential, but not yet applied for
(ii.) IPR undertaking/licensing declaration Let’s say there are 5 patents (all being part of one patent family)
FRAND
FRAND
 3rd party IPR
FRAND
 Essential, but not yet applied for
 Essential D3 D4
FRAND D2
 Essential D5
 Essential D1
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
No FRAND-undertaking
ETSI
Request FRAND-undertaking
GSC IPR Workshop
GSC-13  Boston, July 2008

17.  Essential, but not yet applied for
(ii.) IPR undertaking/licensing declaration Let’s say there are 5 patents (all being part of one patent family)
FRAND
FRAND
 3rd party IPR
FRAND
 Essential, but not yet applied for
 Essential D3 D4
FRAND D2
 Essential
 Essential D5
 Essential D1
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
No FRAND-undertaking
ETSI
Clause 8 IPR Policy
GSC IPR Workshop
GSC-13  Boston, July 2008

18.  Essential, but not yet applied for
(ii.) IPR undertaking/licensing declaration Let’s say there are 5 patents (all being part of one patent family)
FRAND
FRAND
 3rd party IPR
FRAND
 Essential, but not yet applied for
 Essential D3 D4
FRAND D2
 Essential D5
 Essential
FRAND-undertaking D1
No FRAND-undertaking
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
ETSI
Request FRAND-undertaking
GSC IPR Workshop
GSC-13  Boston, July 2008

19.  Essential, but not yet applied for
(ii.) IPR undertaking/licensing declaration Let’s say there are 5 patents (all being part of one patent family)
FRAND
FRAND
 3rd party IPR
FRAND
 Essential, but not yet applied for
 Essential D3 D4
FRAND D2
 Essential
Clause 8 IPR Policy D5
 Essential D1
IPR owner
Disclosure
(Clause 4.1 IPR Policy)
ETSI
Request FRAND-undertaking
GSC IPR Workshop
GSC-13  Boston, July 2008

20. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

21. Improvements to the ETSI IPR Database
Matter is linked to Patent Family issue
Recommendation of the IPR SC (endorsed by GA#51 – Mar ’08):
to provide the funding necessary to restructure the ETSI IPR Database
Database Expert Group has been created to support the further development of a restructured IPR Database
Requirements:
Professional analysis of the data model of the ETSI IPR database
IPR declarations of ETSI members and updates to be scanned and stored in the database as pdf-files (or a similar format)
GSC IPR Workshop
GSC-13  Boston, July 2008

22. Improvements to the ETSI IPR Database
Requirements (cont’d):
history concept where every change is documented and traceable
complete database to be provided for download
supporting definition of private search criteria
downloadable in such a manner that it replaces an existing older download of the database without destroying private search criteria
Possibility to check the up-to-dateness of entries and patent family information with help of the official patent registers at PTO’s (e.g. provision of a link from entry in ETSI IPR Databse to the related entry in the official patent database of EPO)
migration of existing data to restructured database without loss of information
further co-operation with EPO should be investigated.
GSC IPR Workshop
GSC-13  Boston, July 2008

23. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

24. IPR Licensing Declaration forms
Making the use of the IPR Licensing Declaration forms mandatory
Current situation:
ETSI disposes of two forms which can be used by IPR owners to make declarations to ETSI (General IPR licensing declarations and IPR Information statements and licensing declarations)
The use of the forms is not mandatory at present
increase of cases where the wording of the forms has been modified by declarants
amendment are suitable to hamper the reliability of the declarations and affects legal certainty, as even slight amendments may have far-reaching effects.
impossibility to review the wording of every declaration
GSC IPR Workshop
GSC-13  Boston, July 2008

25. IPR Licensing Declaration forms
IPR SC found that a pre-requisition for a decision whether to make the use of the forms mandatory or not, is an improvement of the format and the content of the forms, which should be aligned with the language of the ETSI IPR Policy
ETSI SEC tabled a proposal which received wide support, but consensus could not yet being achieved
Topic to be further discussed at Meeting#5 – Sept ‘08
GSC IPR Workshop
GSC-13  Boston, July 2008

26. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

27. Examination of competition law issues
What are the issues regarding competition/antitrust law (if any) affecting ETSI and ETSI Members that may arise in a standardization process where a Member notifies the organization of a suspected future anti-competitive practice by another Member?
What should an SDO do in a situation where it is confronted with the allegation that licensing terms that have been disclosed ex-ante may not be FRAND
Can one distinguish between commercial discussions on IPR matters that are not allowed in ETSI and raising antitrust concerns in a Technical Body with subsequent evaluation of any such concerns
After intensive discussions IPR SC was not able to reach a consensus on the matter and decided to ask for an external legal opinion
GSC IPR Workshop
GSC-13  Boston, July 2008

28. Examination of competition law issues
External counsel has been carefully selected and mandated with a legal opinion on the question whether there is need to modify any of ETSI’s procedures or policies to address possible anti-competitive conduct
Expert opinion indicated that "... there is no need to modify any of ETSI’s procedures or policies to address possible anti-competitive conduct ...”, but consensus on this opinion was not reached within the IPR SC.
Recommendation of the IPR SC (endorsed by GA#51 – Mar ’08):
to note that the subject of handling antitrust issues is closed until new issues are tabled
GSC IPR Workshop
GSC-13  Boston, July 2008

29. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

30. Development of documentation rules
New technological developments are not only discussed within SDO’s, but are in parallel also subject to patent applications
Cooperation between PTO’s and SDO’s is a win-win situation
PTO’s increase the quality of granted patents
SDO’s reduces risk of IPR problems linked to unduly granted patents
Resolution GSC-12/23 (IPR WG) on the cooperation with PTO’s
ETSI and the EPO have established a close cooperation
GSC IPR Workshop
GSC-13  Boston, July 2008

31. Development of documentation rules
Electronic searchability becomes increasingly important for PTO
To allow better examination documentation needs to contain information on bibliographic data such as effective publication date, working group, date and place of meeting, author or editor
Develop documentation rules that lead to a documentation easily searchable in its entirety
Recommendation from IPR SC (to be endorsed by GA# /26 Nov ‘08)
ETSI Secretariat to prepare a meeting document template for use by ETSI Technical Bodies and WGs
ETSI Board to update the Technical Working Procedures (TWP) to enforce the use of this template by the TBs.
ETSI to draw the attention of other related SSOs with which ETSI has established links/contacts (e.g. through the GSC) on the importance of the matter and to share information
GSC IPR Workshop
GSC-13  Boston, July 2008

32. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

33. Irrevocability of FRAND licensing declaration
Continued availability of FRAND licensing declarations is key
FRAND licensing declaration fails to serve purpose if it can be revoked at a later point
Recommendation from IPR SC (to be endorsed by GA# /26 Nov ‘08):
To insert clarifying language, i.e. the word "irrevocable“, in Clause 6.1 of the ETSI IPR Policy as follows:
"When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner to give within three months an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions under such IPR to at least the following extent: ..."
GSC IPR Workshop
GSC-13  Boston, July 2008

34. Topics under critical scrutiny
Introduction
Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

35. Assignment of a patent N-Data Solutions (FTC No. 051 0094 (Jan. 2008)
Transfer of an IPR should not be used to circumvent a FRAND licensing declaration
Support for the principle but yet no common agreement on how to implement it
Topic to be further discussed at Meeting#5 – Sept ‘08
GSC IPR Workshop
GSC-13  Boston, July 2008

36. Conclusion Introduction Topics under critical scrutiny
Disclosure and FRAND licensing declaration with regard to Patent Families
Improvements to the ETSI IPR Database
Revision of IPR Licensing Declaration forms
Examination of Competition/antitrust law issues in standardization process
Development of documentation rules facilitating the work of PTO’s
Irrevocability of FRAND licensing declaration
Assignment of a Patent that is subject to a FRAND licensing declaration
Conclusion
GSC IPR Workshop
GSC-13  Boston, July 2008

37. Conclusion
ETSI IPR Policy is a key element for the success of ETSI’s globally-applicable standards
fair balance of all the interests involved
allowing Members to fully reserve their IPRs is an incentive for high technology companies to participate in the standardization process enabling ETSI to draft excellent and high-quality standards
ETSI is effectiveliy facing the new challenges
ETSI will continue to lead the debate on IPRs and Standards
GSC IPR Workshop
GSC-13  Boston, July 2008

38. Thank you for listening
Dr. Michael Fröhlich, D.E.A
Legal Affairs Director
Attorney-at-law
+33 (0)
GSC IPR Workshop
GSC-13  Boston, July 2008
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