Jeju, 13 – 16 May 2013 Standards for Shared ICT

Latest developments Latest developments in the field of IPR since GSC-16bisin the field of IPR since GSC-16bis

Antoine DOREAntoine DORE

Senior Legal OfficerSenior Legal Officer

International Telecommunication UnionInternational Telecommunication Union

Document No:

GSC17-IPR-09

Source: ITU

Contact: Antoine Dore

GSC Session:

IPR Working Group

Agenda Item:

4.5

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GSC-16 bisGSC-16 bis

• An interim meeting of the GSC IPR Working Group (“GSC-16bis”) convened in 2012 in view of the fact that GSC-17 would not meet until May 2013.

• In consultation with the host of GSC-16 (ISAAC), it was agreed that this interim meeting would be organized by ITU and held at ITU Headquarters, Geneva, Switzerland, on 9 October 2012, in advance of the IPR Roundtable on 10 October.

• The format of this interim meeting followed the usual pattern i.e. contributions from GSC members and its regular Observers on current IPR subjects of interest to the ICT standards community.

• Ten organizations presented contributions:– Members: ARIB, ATIS, ETSI, ITU, TIA, TTA, and TTC– Observers: ANSI, EPO, WIPO

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GSC-16bisGSC-16bis

• Emphasis was on information sharing.• Highlights and participants’ presentations may

be found here.• In view of the importance of the IPR activities

currently taking place in each organization, the interim meeting requested that a full half day be once again devoted to IPR issues at GSC-17

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ITU Patent RoundtableITU Patent Roundtable

• In recent years, the ICT industry has witnessed an upsurge of standards-related patent (SEP) litigation around the world in particular among parties involved in the wireless, SmartPhone and tablet computer industries.

• Certain ICT industry players allege, among other things, that holders of SEPs that are subject to a RAND licensing commitment under the terms of SDOs' patent policies are seeking non-RAND licensing terms and leveraging injunctive relief to pressure the implementer into accepting those terms.

• Other industry participants, in turn, argue that if their SEPs are being infringed, they should be able to negotiate patent licenses and enforce their patent rights in the same way that patent holders do in connection with non-SEPs.

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ITU Patent RoundtableITU Patent Roundtable

• According to some stakeholders, the effect of these disputes and investigations regarding RAND licensing approaches could stifle, rather than promote, innovation and competition within the ICT industry. As a result, this issue might affect all relevant stakeholders, namely SDOs, government authorities, industry participants and customers or end-users.

• Bearing in mind ITU’s belief that the concerns raised by the ongoing SEP litigation are of utmost importance to the ICT industry as a whole, the Union organized a one-day (10 October 2012) Patent Roundtable aimed at providing a neutral venue for industry, standards bodies and regulators to exchange ideas that can guide future discussions on whether current patent policies and existing industry practices adequately respond to the needs of the various stakeholders.

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ITU Patent RoundtableITU Patent Roundtable

• Participation at the Patent Roundtable was limited to 132 delegates to ensure a lively and constructive discussion.

• 78 entities representing operators, manufacturers, SDOs, competition regulators, governments and academia attended the event. The list of participating organizations is contained in the additional slides to this presentation.

• Details regarding the structure and findings of the Patent Roundtable may be found here.

• In addition to the speakers’ presentations, 15 written contributions were submitted on the topic of SEP litigation and RAND licensing commitments. These contributions may be found here.

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ITU Patent RoundtableITU Patent Roundtable

• Debate focused primarily on:– The availability of injunctive relief for RAND-encumbered SEPs;– The meaning of “reasonable” in RAND licensing terms.

• TSB Director:– Acknowledged that providing market players with clear, transparent, effective and up-

to-date patent policies works for the benefit of the industry as a whole.– Noted that under certain circumstances allowing injunctive relief for SEPs could

permit SEP owners to use such leverage to demand royalties in excess of the actual value of the patent.

– Noted the need for a balanced approach: imposing limitations on the right of patent holders to enforce their intellectual property rights could deter them from participating in the standardization process.

– With regard to the meaning of reasonable in RAND, acknowledged that the patent policies of SDOs do not provide explicit guidance on what constitutes “reasonable” in a RAND context.

– Requested the TSB Director’s Ad Hoc Group on Intellectual Property Rights to begin work on a recommendation aimed at providing high level principles clarifying the meaning of reasonable, and the issue of injunctive relief, in the RAND context.

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• Mandate of the IPR AHG: act as a forum for the exchange of views on IPR-related issues between experts; provides advice to the TSB Director on IPR issues, principally copyrights and patents, related to ITU-T’s standardization activities.

• Competition regulators have been participating in the AHG meetings since October 2012. US / European regulators have mentioned that ITU-T has a strong interest in protecting the integrity of the standardization process by clarifying its patent policy and thereby limiting the abuse of SEPs.

• The AHG met on: • 11-12 October 2012• 24-25 January 2013• 21-22 March 2013• 24-25 April 2013

• Upcoming meetings:• 24-25 June 2013• 24-25 July 2013• 12-13 Sept. 2013

IPR AHGIPR AHG

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IPR AHGIPR AHG

• The idea of having an intense series of back-to-back meetings was to allow the IPR AHG to progress quickly towards the goal of defining improvements to ITU’s Patent Policy and related Guidelines

• As per the instruction of the TSB Director, a large part of the work of the IPR AHG is devoted to examining: – Availability of injunctive relief for RAND-encumbered SEPs– Meaning of “reasonable” in RAND licensing

• Additional items under discussion: – Meaning of “non-discriminatory” access to RAND-encumbered

SEPs– Clarification on the binding nature of certain elements in the

Guidelines for implementation of the Common Patent Policy– Transfer and assignment of SEPs

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IPR AHGIPR AHG

• Since February, joint contributions on injunctive relief and the definition of ‘reasonable’ have been submitted to the IPR AHG.

• At the last IPR AHG meeting, most of the discussion focussed on what is felt to be the most pressing issue i.e. the availability (or non-availability) of injunctive relief in a RAND context.

• The IPR AHG is currently trying to converge positions on this important issue.

• The AHG is expected to provide its opinion on the aforementioned issues to the TSB Director at the end of 2013.

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Supplementary SlidesSupplementary Slides

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Organizations present at the Patent RoundtableOrganizations present at the Patent Roundtable

Alcatel-Lucent, ATIS, American Intellectual Property Law Association, Apple, ARIB, Berkeley Research Group, Botswana, Brick Court Chambers, Broadcom, IEC, CEN, CENELEC, China, China National Institute of Standardization, Cisco Systems, Computer & Communications Industry Association, Covington& Burling, Deutsche Telekom, Dolby, Eindhoven University of Technology, European Patent Office, ETSI, European Union, FRANCE BREVETS, France Télécom Orange, Freescale Semiconductor, g+europe, Germany, Google, Hewlett-Packard, Huawei Technologies, ICT Standards Advisory Council of Canada, IEEE, Innovation Insights, Intel, Intellectual Property Watch, InterDigital Communications, International Association of IT Lawyers, ISO, ISOC, ITU, JETRO Japan, JETRO Duesseldorf, JISC, Korea, Microsoft, Motorola Mobility, N&M Consultancy Limited, NAGRAVISION, Nokia Corporation, Nokia Siemens Networks, NTT, Panasonic Corporation, Philips Electronics, Phonak Communications, Qualcomm, Research in Motion, Rottterdam School of Management, Samsung Electronics, Siemens, Sisvel, SISVEL INTERNATIONAL, Sony Corporation, Switzerland, Technische Universität Berlin, Telecommunications Industry Association, Telefon AB - LM Ericsson, TTA, TTC, Turk Telekom Group, UNCTAD, United Kingdom, United States, University of Aberdeen, University of California, Via Licensing Corporation, WIPO, WiseHarbor, WTO.

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Number of declarations per countryNumber of declarations per country

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