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
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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 +/- 5000 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
http://www.etsi.org
ETSI in one minute
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2 Partnership Projects, 34 Technical Bodies, 80+ WGs
Nobody does it alone
Partnerships
International
ITU-T
Inter
regional
Europe
ITU-R
ITU-D
JTC1
GTSC
GRSC
EC
CEPT
CEN/
CLC
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IEEE
WIMAX forum
NFC forum
CCSA
CESI
EBU
DVB Project
OMA
CITEL
GSMA
GCF
IPv6 Forum
NENA
TETRA MoU
(70+ active)
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
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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
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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
• (http://www.etsi.org/WebSite/document/Legal/I
PRforms.doc)
• 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
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Latest developments of the ETSI IPR Policy
Licensing declaration related:
Also
Irrevocability of
FRAND
licensing
undertaking
• FRAND licensing undertaking fails to serve
purpose if it can be revoked at a later point
• Brings legal certainty to the standard adopters
Transfer of
Ownership
• 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.
Software
Copyright
Guide
• 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”
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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
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First century trade routes
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