TIA IPR Standing Committee Report to

TIA Technical Committee

“Normative References and IPR”

October 21, 2005Paul Vishny, Chair

Dan Bart, TIA

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Introduction Patented Technology may be used

in Standards– TIA and ANSI Intellectual Property Rights

(IPR) Policies expressly contemplate and authorize the use of patented technology in standards

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TIA IPR Policy

“There is no objection in principle to drafting a Standard in terms that include the use of a patented invention, if it is considered that technical reasons justify this approach.”

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TIA is Company and Technology Neutral

In addition to the TIA IPR Policy, TIA’s Board direction is to be company and technology neutral, and not considering a company’s patented technology would be “non-neutral” with respect to that company and its technology.

Failure to consider technology merely because it is patented can itself be a TIA legal risk on antitrust grounds.

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Basic Elements of IPR Policies The basic elements of SDO IPR Policies are that if

a patented invention is “essential” to complying with a standard,– i.e., an Essential Patent - only the claim(s) of a patent

(whenever issued) which is (are) necessarily infringed by the practice of a Normative portion of a TIA Standard (TIA Engineering Manual),

– THEN the SDO must have a Letter of Assurance (LoA) from the Patent Holder offering a patent licensing commitment on terms that are Reasonable and Non-Discriminatory (RAND) and in accordance with the SDO IPR Policy

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Basic Elements of IPR Policies

TIA Engineering Manual:– Prior to approval of a proposed Standard, a

record of the Patent Holder's Statement shall be placed and retained in the files of TIA. TIA will forward a copy of the statement to ANSI when the document in process is related to the development of an American National Standard.

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Normative Elements at TIA Normative (mandatory) elements - those elements

of a Standard which always must be complied with in order to claim conformity with the Standard.

Normative (alternate) elements - those elements of a Standard, any one or more of which may be complied with in order to claim conformity with the Standard.

Normative (optional) elements - those elements of a Standard which may be selected in order to claim conformity with the Standard and which if selected, must be implemented as specified in the Standard.

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Where are Normative Elements Found?

Normative Elements can be found: In the text of the Standard itself In Normative Annexes In Normative References

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Normative “Issues”

If the Normative elements which may have patented technology are in:– The Standard’s text itself – Process as normal– A Normative Annex – Process as normal– A Normative Reference from another ANSI

SDO, ISO, IEC, ITU, ETSI – (presumed compliant with TIA/ANSI Policies and consistent LoA is on file at that SDO) – Process as normal

– BUT IF . . .

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Normative “Issues”

If the Normative elements which may have patented technology are in:– A Normative Reference from other

“External Organizations” (other than ANSI SDOs, IEC, ISO, ITU, ETSI), then availability of compatible IPR Policies and LoAs becomes an issue.

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Normative “Issues”- External Organizations

Is the POLICY of the External Organization (EO) compatible?– Even if compatible now, Policies can change over

time Are the LoAs compatible with TIA’s IPR

Policy?– What if 3rd Party Patent Holder, not participating in

External Organization’s process, is disclosed, and no LoA is obtained?

– How does TIA Standard User get assurance of patent license on at least RAND Terms?

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Normative “Issues”- External Organizations

External Organizations that have raised legal review concerns at TIA:– CDPD Forum– OMA– IETF– WiFi® Alliance– AMTA, etc.

There are more than 400 Fora/Consortia in ICT Sector!

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Normative “Issues”- External Organizations

Getting an organization to review or change its IPR Policy to be compatible with TIA/ANSI can be a formidable and time-consuming task – ETSI IPR Policy concerns took 5 years to resolve

– TIA debated its IPR Policy changes over 2 years

– ANSI is debating its IPR Policy revisions over 3 years

– OMA is now going on 2 years• OMA documents removed as references for ITU input

– IETF issues have surfaced and TIA documents on hold

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Normative “Issues”- External Organizations - IETF

What if IETF is advised 3 companies likely own essential patents: “A,” “B,” and “C.”

“A” and “B” are in IETF WG and give LoAs

“C” is not participating in WG, and IETF WG does not seek or get a LoA from “C”

Can TIA Formulating Groups (FGs) make Normative Reference to that WG’s RFC?– Where is the RAND LoA commitment from Company C for

TIA Standard User?

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Recommendation to TC from IPR SC

If “Normative References from EOs” were treated at TIA “as though they were Normative Annexes” to the TIA Standard that references them (in a process sense):– TIA FG Chairs ask for identification of any known Patent Holders

for any patented technology essential to the “EO Normative Reference”

– If Disclosures are made related to EO Normative References, then handled at TIA in similar way to a disclosure made if patented technology were in a Normative Annex, i.e., TIA Secretariat needs to see if LoAs compatible with TIA IPR Policy are on file.

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Recommendation to TC from IPR SC

In case described on Slide 14, TIA Secretariat should find LoAs on file at EO from Companies A and B– IF Compatible LoAs, then inquiry ends for A and B

– For Company C, no LoA would be on file at EO (i.e., IETF)

– TIA Standards Secretariat would need to seek (under TIA IPR Policy) a LoA from Company C and have it filed at TIA.

• This type approach is being used in the case of OMA for disclosed IPR Holders who are NOT OMA members, since OMA Policy is only binding on OMA members

• More TIA Staff effort required than if technical requirements (i.e., normative elements) had been in Normative Annex, but hopefully avoids the delay trying to get EO Policy changed

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Consensus Recommendation to TC from IPR SC (10/14/05)

The concept is that our TIA process encouraging early disclosure of essential IP will be applied not only to essential IP that is known to be explicitly included in the TIA standard, but also any essential IP that is known to be contained in a normatively-referenced document. – it is the obligation of the Standards Department to follow up on any claims of

essential IP by requesting that the claimant fill out the required form indicating that they are willing to license the essential IP to all users on reasonable and non-discriminatory terms.

– Thus, this obligation will be extended to not only essential IP that is explicitly included in the standard under development, but also any essential IP that is known to be incorporated by reference, i.e., included in documents referenced normatively.

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Consensus Recommendation to TC from IPR SC (10/14/05)

Some concern was raised over the possibility that despite any assurances on file with the EO, it cannot be expected that these assurances will carry forward.

New assurance letters may need to be sought since the original assurance letter may be limited and will not apply to the application noted in the TIA standard.

This is true if the original assurances are restrictive in their application.

Thus, the TC IPR SC should continue to meet as needed and monitor implementation issues.

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Consensus Recommendation to TC from IPR SC (10/14/05)

DECISION: The IPR Standing Committee approves the Chair’s proposal for handling the normative referencing of documents of non-traditional SDOs/consortia whose IPR policy is inconsistent with TIA’s IPR policy, in particular the attempt to treat such documents as text appearing in TIA standards, subject to the same IPR disclosure requirements as contained in the TIA IPR policy.

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Recommendation to TC from IPR SC and TIA Staff

Technical Committee should approve and direct this approach by FG Chairs and TIA Secretariat

TIA Staff should provide conference call training to Engineering Committee leadership

For TIA Standards on hold, this approach and disclosures and related follow-ups for LoAs (if needed), should occur asap to allow standards to be published soon

TIA IPR SC should continue reviewing EO Normative Referencing as implementation issues emerge, along with its other assigned tasks

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Questions?