Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All 2011 IN REVIEW: ITU’S ACTIVITIES IN THE FIELD OF STANDARDIZATION & IPR Antoine Dore, Senior Legal

Halifax, 31 Oct – 3 Nov 2011 ICT Accessibility For All

2011 IN REVIEW: ITU’S ACTIVITIES IN THE FIELD OF

STANDARDIZATION & IPR

Antoine Dore,

Senior Legal Officer, ITU

Document No:

GSC16-IPR-03

Source: ITU

Contact: antoine.dore @itu.int

GSC Session:

IPR

Agenda Item:

4.2


GSC16-IPR-03

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A Year in Review

Three strategic objectives in 2011:

– Review existing IPR Guidelines to better respond to industry needs, and the rapidly changing ICT environment.

– Increase the transparency and stability of the system in place in ITU.

– Contribute to the debate on the inclusion of patents in standards.


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An open and transparent review process

• The ITU decided to engage in an open and transparent review process of its two main Guidelines:– The TSB Director’s IPR AHG was mandated to propose

improvements to the Patent Guidelines and Software Copyright Guidelines.

• ISO/IEC took an active part in the review of the Patent Guidelines.

• The WSC Patent Task Force was asked to consolidate all inputs, and propose revised Patent Guidelines for approval by the appropriate bodies in ISO, IEC and ITU.


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Review of the Patent Guidelines

• Brief reminder:

– Since 2007, ITU/ISO/IEC share a common Patent Policy and common Patent Guidelines.

– The purpose of the common Patent Policy is to ensure that patents incorporated into ITU standards are available to everyone without undue constraints.


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• Brief Reminder:

– The Patent Policy helps ITU manage the risks associated with the inclusion of patents in its standards.

– By requiring early disclosure of essential patents and licensing commitments, ITU ensures that no IPR Holder is placed in a position to stop others from complying with its standards, and mitigates patent hold-ups and other similar behaviours.


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• Four main changes have been introduced in the revised Patent Guidelines:– Definition of Patent has been clarified to address the

“essentiality” issue.– The status of the licensing commitment in case of

assignment/transfer of patent rights has been clarified.– The general understanding to the effect that licensing

commitment cannot be withdrawn or amended (unless more favourable licensing terms are offered) has been reflected in the Guidelines.

– To increase legal certainty and transparency, the definition of Patent was also added to the licensing commitment.


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• The revised Guidelines have been endorsed by the relevant bodies within ITU.

• The publication and entry into force of the revised Patent Guidelines is pending approval by the relevant bodies within ISO/IEC.

• The revised Guidelines are expected to enter into force later this year. As per standard practice, they will have no retroactive effect.


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Review of Software Copyright Guidelines

• Brief reminder:– First edition of the Software Copyright Guidelines was

developed more than 10 years ago. – At that time, ITU was one of the first standards bodies

to have detailed Guidelines on this issue.– It was felt necessary to review these Guidelines in

light of the experience both in ITU and in other standards organizations.


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• Review process began in 2010, and continued throughout 2011.• Once again, an open and transparent review process was put in

place:– A Task Group composed of interested parties was set-up to

examine the issue.– The mandate of the Task Group included the development of

proposals for review by the TSB Director’s IPR AHG at its December 2011 meeting.

• The Task Group is expected to submit its report within the next few weeks.

• The TSB Director’s IRP AHG is requested to provide its final recommendations before the end of this year.


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• Topics currently being discussed within the Task Group include, among others:– How to better describe the issues that arise in connection with

the incorporation of software in standards.– What is the right balance between simplicity (the Guidelines are

meant to be used by persons not familiar with complex IPR issues) and completeness?

– What is the definition of software? (This raises the question of the scope of the Guidelines.)

– What types of software do not raise IPR issues?– Is it appropriate to maintain a strong discouragement on the use

of software?


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ITU-EPO Collaboration Agreement

• EPO and ITU have a long history of collaboration.• EPO became a member of ITU in 2003.• Over the years, this collaboration has developed in

scope and intensity.• In 2011, the collaboration between ITU and EPO took on

a new dimension by the signing of an agreement principally aimed at easing the tensions between the patent and standardization systems.


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ITU-EPO Collaboration Agreement

• Specific projects aimed at increasing the transparency of the system and the quality of patents being granted will be implemented:– ITU and EPO patent databases will be linked to increase

transparency relative to the identity and status of claimed patents.

– ITU and EPO will continue to collaborate on ITU document format definition and dissemination policies to align them as much as possible on EPO prior art search needs.

– ITU and EPO will work together on capacity building activities on IPR and standardization issues.


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Collaboration with other Patent Offices

• The ITU/EPO collaboration agreement is the latest initiative aimed at addressing the new challenges faced by the patent and standardization systems.

• ITU is also seeking bilateral cooperation with other Patent Offices.

• The admission of USPTO as an ITU member is currently being formalized.

• Similar arrangements with JPO, KIPO, and SIPO will be pursued.


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International Workshop

• ITU and the Indian Government are organizing a workshop on Standards and IPR issues on 19-20 December 2011, in New Delhi, India.

• The goal is to provide a forum to discuss current issues relating to the inclusion of patented technology and software in standards.

• International experts from both the public and private sectors have been invited to provide an overview of the issues and share their insights on present and future developments.

Documents

Halifax, 31 Oct – 3 Nov 2011ICT Accessibility For All 2011 IN REVIEW: ITU’S ACTIVITIES IN THE FIELD OF STANDARDIZATION & IPR Antoine Dore, Senior Legal