1. Tutorial on intellectual property rights (IPRs) Antoine Dore Legal Officer ITU Legal Affairs Unit Phone: +41 22 730 6338 Email: antoine.dore@itu.int Tutorial for leadership teams of ITU-T study groups, TSAG, tariff groups and focus groups Geneva, 15-16 December 2008

2. 2 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Part 1 Overview of the main forms of intellectual property

3. 3 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 The main forms of intellectual property Copyrights Patents Trademarks (artistic works) (inventions) (product identity)

4. 4 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Copyrights Rights given to creators for their literary and artistic works

5. 5 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 What is covered by copyright? Copyright protects the expression of an idea and not the idea itself – Books, films, music, tutorial on IPRs, etc. – Computer programmers are considered artists under copyright law

6. 6 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Main rights conferred upon the copyright owner Reproduction Publication Distribution Sale/lease Translation ©

7. 7 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Main restrictions to copyright Copies for private purposes Copies for archiving purposes Quotations

8. 8 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Patents Rights granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem – Whether or not patents can be granted for computer software is debated

9. 9 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 What can be patented? Inventions – Must be new – Must be useful – Must not be obvious Application evaluated by a patent examiner

10. 10 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Protection granted by patents Monopoly on the invention, typically for a period of 20 years No protection on the description

11. 11 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Trademarks A distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise

12. 12 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Protection granted by trademarks Exclusive right to use a mark to distinguish services or products Term of protection: unlimited as long as the mark is used

13. 13 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Formalities Trademark® -vs- Trademark

14. 14 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Protection Term Registration Symbol Cost Copyrights the expression of an idea life of the author + 50 years none required © but use of symbol not required for protection nil Patents the monopoly on an invention 20 years required, includes review process no symbol but patent number often seen on product expensive Trademarks the symbol used to distinguish goods unlimited required, optional in common law jurisdictions ® or, use of symbol not strictly required for protection moderately expensive

15. 15 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Part 2 Overview of the Common Patent Policy for ITU-T/ITU-R/ ISO/IEC and its related Guidelines and Forms

16. 16 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Three documents to consider: – Common Patent Policy – Guidelines for implementation of the Common Patent Policy – Patent Statement and Licensing Declaration Forms These documents may be found at: www.itu.int/ITU-T/ipr/ www.itu.int/ITU-T/ipr/

17. 17 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy What is the objective of the Common Patent Policy? – To ensure that patented technology incorporated into a Recommendation is accessible to everyone without undue constraints

18. 18 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy The inclusion of patented technology into standards raises very complex issues that can be addressed in a number of ways: – ITU, ISO, IEC, ANSI, ETSI, ATIS, CCSA, TIA, TTA, TTC, etc. have opted for the « RAND » approach – Other SDOs have chosen to address the same issues by requiring patent holders to grant royalty-free licenses – No consensus in the industry as to how best to address IPR issues in the context of ICT standardization – No « one-size-fits-all » solution; different approaches can work in different environments

19. 19 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy The Common Patent Policy attempts to balance different and divergent interests to promote broad participation and wide implementation of the Recommendation The main stakeholders in ICT standardization are the: – Patent holder – Manufacturer – Service provider – Government

20. 20 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common patent Policy Interests of the patent holder – Wants to share its innovations and obtain a (reasonable) return on research investments – Rejects any obligation to disclose its licensing terms and conditions Interests of the manufacturer – Often, the manufacturer is a patent holder itself whose technology is required by other manufacturers – Requires stability and certainty with regard to patent commitments – May have concerns about the level of royalties, but is generally supportive of RAND policies

21. 21 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Interests of the service provider – Business model is dependent upon the distribution of low- cost equipment and on the sales of value-added services – Has conflicting interests – to reduce the products costs while encouraging patent holders to participate in standardization activities Interests of the Government – Promotes the public interest – i.e. broadest use possible of standards / interoperability – Generally favors IPR policies that have strong disclosure obligations and requirements that patents be licensed after adoption of the standard – Royalty-free licensing is, sometimes, considered as a preference

22. 22 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Fundamental Principles: – Early disclosure of essential patents – Accessibility of essential patents to everyone under reasonable and non- discriminatory conditions (RAND)

23. 23 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy To whom does the disclosure rule apply? – « Any party participating in the work of the ITU … » When should disclosure take place? – « at the outset » or « as early as possible » Is disclosure mandatory? – Strictly speaking, NO. – Common Patent Policy uses the word « should » and not « shall » – The Guidelines use the word « encourage » – However, there may be severe consequences in case of failure to disclose a patent – Dell case

24. 24 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy What should be disclosed? – « essential patents ». Neither the Policy nor the Guidelines include a definition of these terms. Is disclosure limited to my own patents? – No. Consistent with the Policy, Recommendation A.8, Article 3.6.1, stipulates that any party…should draw the attention of the Director of TSB to any known patent…either of their own or of other organizations.

25. 25 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Do I have to conduct patent searches? – information should be provided on a best effort basis and there is no requirement for patent searches How do I disclose my patents? – The forms attached to the Policy must be used

26. 26 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy A word of wisdom regarding the duty to disclose: since patents are complex legal instruments, in case of doubt…

27. 27 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008

28. 28 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Patent Statement and Licensing Declaration Form – The main purpose of the Declaration Form is to ensure that patent holders will agree to license their technology on a royalty-free basis or under RAND conditions – Despite its name, the Licensing Declaration Form is not a License Agreement – Generally speaking, the Declaration Form provides three options Option 1 - Royalty-free Option 2 - RAND Option 3 - No license

29. 29 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy – Patent Holders must use the Declaration Form – Declaration Forms must be sent to the attention of the TSB Director and not to the Study Group – Declaration Forms (licensing commitments) cannot be withdrawn Two exceptions – obvious errors and more favorable licensing conditions – Recommendation A.1, Article 1.4.6: Chairmen will ask, during each meeting, whether anyone has knowledge of patents the use of which may be required to implement the Recommendation…. An oral response (declaration) during a SG meeting is not sufficient to conform to the Policy – Declaration Form must also be filled-in and returned to the TSB Director

30. 30 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy In case Option 3 is selected (unwillingness to license), the patent holder must provide the following information – Patent number – An indication of which portions of the Recommendation is affected by the patent – A description of the patent claim As long as there is no indication of a patent holder selecting option 3, the Recommendation may be approved

31. 31 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy The Policy does not forbid the disclosure of licensing terms – information may be provided by Patent Holders, if they so desire However, the Policy does not allow SG to discuss these licensing terms or to take a position concerning the essentiality, scope, validity of any claimed patents Discussions in SG as to whether or not patented material should be included in a Recommendation is allowed

32. 32 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Patent Database – May be found at www.itu.int/ipr/IPRSearch.aspx?iprtype=P S www.itu.int/ipr/IPRSearch.aspx?iprtype=P S – Reflects the information received – Is not certified to either be complete or accurate

33. 33 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Common Patent Policy Disputes – ITU will not engage in settling disputes between a patent holder and a licensee

34. 34 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Part 3 Overview of the Software Copyright Guidelines

35. 35 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Software Copyright Guidelines Two documents to consider – Software Copyright Guidelines – Software Copyright Statement and Licensing Declaration These documents may be found at www.itu.int/ITU-T/ipr/ www.itu.int/ITU-T/ipr/ Unlike the Common Patent Policy, these Guidelines are specific to ITU-T

36. 36 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Software Copyright Guidelines What is the objective of these Guidelines? – To remind SG that ITU strongly discourages the inclusion of copyrighted software owned elsewhere than in ITU. Why? The nature of copyright protection makes it possible to work around a copyright to develop alternative solutions – To provide a process in the exceptional situations where a Study Group still believes that software copyrighted outside ITU must be included in a Recommendation

37. 37 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Software Copyright Guidelines In practice, the vast majority of software are submitted to ITU without restrictions « Mass-market software » or « off-the- shelf software» should not be included in Recommendations

38. 38 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Software Copyright Guidelines Software Copyright Statement and Licensing Declaration Form – Again, the main purpose of the Declaration Form is to ensure that copyright holders will agree to license their software on a royalty-free basis or under RAND conditions – Despite its name, the Licensing Declaration Form is not a License Agreement – Generally speaking, the Declaration Form provides three options Free Licenses RAND Licenses No license

39. 39 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Software Copyright Guidelines Software Copyright Database – May be found at www.itu.int/ipr/IPRSearch.aspx?iprtype=S W www.itu.int/ipr/IPRSearch.aspx?iprtype=S W – Reflects the information received – Is not certified to either be complete or accurate

40. 40 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Part 4 Overview of the Trademark Guidelines

41. 41 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Trademark Guidelines One document to consider – Guidelines related to the inclusion of Marks in ITU-T Recommendations – No Declaration Forms These documents may also be found at www.itu.int/ITU-T/ipr/ www.itu.int/ITU-T/ipr/ Unlike the Common Patent Policy, these Guidelines are specific to ITU-T

42. 42 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Trademark Guidelines What is the objective of these Guidelines? – To provide SG with general information on the issues to be considered regarding the use of marks – To provide specific guidelines on how marks should be referenced

43. 43 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Trademark Guidelines Generally, if referenced properly, no need to obtain permission from the mark owner – No permission required to refer descriptively in a Recommendation to a third partys technology Recommendations should not appear to endorse any particular product or brand

44. 44 Tutorial for SG & TSAG leadership teams Geneva, 15-16 December 2008 Any questions?