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Overview of TSB Director’s Ad Hoc Group on IPR

GSC 8, Ottawa, Canada, 27 April – 1 May 2003

byHoulin Zhao

Director, Telecommunication Standardization Bureau (TSB)International Telecommunication Union

Place des Nations - CH-1211 Geneva 20 – Switzerland

Tel: +41 22 730 5851Fax: +41 22 730 5853

E-mail: houlin.zhao@itu.intITU Web address: http://www.itu.int

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TSB Director’s Ad Hoc Group on IPR

Chairman: Mr. Houlin Zhao (TSB Director)

Members: Open to ITU Members States, Sector Members + invited participants

Active participants include: AT&T, BT, France Télécom, Fujitsu, HP, KDDI, Lucent, Nortel Networks, Siemens, ANSI, ETSI, ISO, TTC

About the IPR Ad Hoc Group: (http://www.itu.int/ITU-T/othergroups/ipr-adhoc/index.html)

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IPR Ad Hoc meetings held since GSC 7/ RAST 10

• 25-26 November 2001

• 14-15 June 2002

• 21-22 February 2003

IPR Ad Hoc Group meetings

Next meeting:• 7-8 November 2003

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1 ITU-T | ISO/IEC common text Patent Declaration Form (http://www.itu.int/itudoc/itu-t/patents/policy/pdc-form_ww9.doc)

- ITU-T Patent Declaration Statement provides for “Reciprocity” condition for option 1 (free) and option 2 (RAND), while ISO/IEC Patent Policy does not expressly provide for such a condition

- Solution: • Check boxes to indicate that the Patent Holder’s

willingness to license is conditional on reciprocity are included in options 1 and 2

• A definition of the term “Reciprocity” is introduced in the form

- ISO/IEC has officially endorsed the use of this form.

Patent Policy Issues

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2 Application of the ITU-T Patent policy to Appendices or other informative parts of ITU-T Recommendations

- There has been a split between those for and against in the IPR Ad Hoc group

- Pragmatic solution was agreed at the February 2003 meeting

The question of whether to encourage the submission of a Patent Statement for the informative parts of a proposed Recommendation should be considered on a case-by-case basis.

Judgment is left to the relevant Study Group

- No change to the actual Patent Policy or to the Guidelines

- Close the discussion, which may, if requested, be revisited after some experience has been gained

Patent Policy Issues (continued)

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3 Discussion on “Reciprocity”

- The group has been further elaborating the definition of “Reciprocity”. There were opinions such as:

• Reciprocity is related only to other “essential” patents in connection with the same standard

• A Patent Holder prepared to grant a licence “on the basis of reciprocity” might not be committed to grant licences to such parties

• Need for clarification on whether or not a Patent Holder choosing option 1 (free) must grant a free licence to another Patent Holder who offers option 2 (RAND)

Patent Policy Issues (continued)

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3 Discussion on “Reciprocity” (continued)

- Proposed text on Definition/Clarification for the Guidelines (for further study)

As used herein, the word “Reciprocity” applies solely to prospective licensees having one or more patents or patent claims that are also essential for the implementation of the same ITU-T Recommendation, and means that the Patent Holder shall only be required to license any such prospective licensee if the latter will commit to licensing its essential patent(s) or patent claim(s) for implementation of the same ITU-Recommendation royalty-free or under reasonable and non-discriminatory terms and conditions.

Patent Policy Issues (continued)

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4 Ongoing discussion on other Patent-related issues

- Proposed change from “pending patent application” to “publishedpatent application” in the patent policy and its text Guidelines

- Proposal addition of new option for “conditional” royalty-free licence

- Handling of normative referenced text developed by other organizations

- Proposal to cope with handling complex IPR cases - e.g.: the possible setting up of an operational “IPR group” in charge of evaluating patent statements at the request of the Study Group

Patent Policy Issues (continued)

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5 Handling of Patent Declaration Statement Database

- Entry of the Patent statements of which ownership has been transferred/withdrawn

Patent Policy Issues (continued)

The original entry remains with a remark stating the change of ownership

- Patent statement presented after the approval of the Recommendation

From July 2002 onwards, a remark, in red characters, is added in the remarks column.

- Licensing declaration with additional condition

As to whether or not to record in the Patent Database seek instruction the relevant Study Group

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Development:

1 Review of the draft guidelines developed by correspondence from the March 2001 meeting

2 The IPR Ad Hoc Group, at its June 2002 meeting, agreed to issue the Software Copyright Guidelines for use on a trial basis in Study Groups

3 As a result of the discussions during the February 2003 meeting, version 2.1 was created for use on a continuous trial basis

Software Copyright Issues

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Scope:1 “Guidelines” instead of “Policy”

2 The structure of the Guidelines is in principle similar to the ITU-T Patent Policy Guidelines

3 The Guidelines discourage Study Groups from including copyrighted software in an ITU-T Recommendation. The incorporation of normative software should be applied in exceptional situations: highly complex algorithms requiring exactness, such as speech coders

4 SDO standards: ITU-T ensures sublicensing withthe Software Copyright Holder for the SDOs

Software Copyright Issues

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Software Copyright Licensing Declaration

Similar to the Patent Declaration, the options being roughly grouped in three categories:

Option 1 Free licence to everyone. This option is subdivided into 4 options (see next slide)

Option 2 Paid for licence granted on reasonable terms and conditions on a worldwide non-discriminatory basis

Option 3 Unwillingness to grant licence

Software Copyright Issues (continued)

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Option 1 Free licence to everyone

For option 1, the Software Copyright Holder should select one of the following:

1.1 The Software Copyright Holder waives the Copyright

1.2 The Holder transfers the Software Copyright to ITU on condition that ITU will grant a free licence on a non discriminatory basis

1.3 The Holder grants a free licence on the basis of reciprocity and non-discriminatory basis (users don’t need to contact the Holder for a licence)

1.4 The Holder grants a free licence on the basis of reciprocity and non-discriminatory basis (users need to contact the Holder for a licence)

Software Copyright Issues (continued)

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Issues remaining for further study:

- Other than under option 1.1 (i.e. under 1.2, 1.3, 1.4 and 2), a licence statement should be included in the Software, permitting certain uses (i.e. the Software evaluation) of the Software free of charge and without the need for a further licence from the holder

- Copyright notices for software used for conformance testing

- Copyright notices for software developed collaboratively between ITU-T and ISO/IEC JTC1, i.e. ITU-T Recommendation H.264

- Consideration of issues arising from the participation of invited experts

Software Copyright Issues (continued)

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Non-Members

Member States &Sector Members

Option 1 (Free)

Option 2 (RAND)

Option 3 (Refusal)

Non-members: 179 (16%)

Option 2: 1025 95%

Members: 906 (84%)

Option 1: 59 (5%)Option 3: 1

Patent Statements received: 1085 (as of 10 March 2003)