Upload
julia-power
View
217
Download
2
Tags:
Embed Size (px)
Citation preview
Tutorial on intellectual property rights (“IPRs”)
Antoine DoreLegal Officer
ITU Legal Affairs UnitPhone: +41 22 730 6338
Email: [email protected]
Tutorial for leadership teams of ITU-T study groups, TSAG, tariff groups and focus groups
Geneva, 15-16 December 2008
2
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Part 1
Overview of the main forms of intellectual property
3
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
The main forms of intellectual property
CopyrightsPatentsTrademarks
(artistic works)(inventions)(product identity)
4
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Copyrights
• Rights given to creators for their literary and artistic works
5
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
What is covered by copyright?
Copyright protects the expression of an idea and not the idea itself– Books, films, music, tutorial on IPRs, etc.– Computer programmers are considered
artists under copyright law
6
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Main rights conferred upon the copyright owner
ReproductionPublicationDistributionSale/leaseTranslation
• ©
7
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Main restrictions to copyright
Copies for private purposesCopies for archiving purposesQuotations
8
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Patents
Rights granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem– Whether or not patents can be granted for
computer software is debated
9
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
What can be patented?
Inventions– Must be new– Must be useful– Must not be obvious
Application evaluated by a patent examiner
10
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Protection granted by patents
Monopoly on the invention, typically for a period of 20 yearsNo protection on the description
11
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Trademarks
A distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise
12
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Protection granted by trademarks
Exclusive right to use a mark to distinguish services or productsTerm of protection: unlimited as long as the mark is used
13
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Formalities
Trademark®-vs-
Trademark™
14
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Protection
Term Registration
SymbolCost
Copyrights
the expression of an idea
life of the author + 50 years
none required
© but use of symbol
not required
for protection
nil
Patents
the monopoly
on an invention
20 years
required, includes review process
no symbol but patent
number often seen on product
expensive
Trademarks
the symbol used to
distinguish goods
unlimited
required, optional in common
law jurisdictio
ns
® or ™, use of symbol
not strictly
required for
protection
moderately
expensive
15
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Part 2
Overview of the “Common Patent Policy for ITU-T/ITU-R/
ISO/IEC” and its related Guidelines and Forms
16
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Three documents to consider:– Common Patent Policy – Guidelines for implementation of the
Common Patent Policy– Patent Statement and Licensing
Declaration Forms
These documents may be found at: www.itu.int/ITU-T/ipr/
17
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
What is the objective of the Common Patent Policy?– To ensure that patented technology
incorporated into a Recommendation is accessible to everyone without undue constraints
18
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
The inclusion of patented technology into standards raises very complex issues that can be addressed in a number of ways:– ITU, ISO, IEC, ANSI, ETSI, ATIS, CCSA, TIA, TTA,
TTC, etc. have opted for the « RAND » approach– Other SDOs have chosen to address the same
issues by requiring patent holders to grant royalty-free licenses
– No consensus in the industry as to how best to address IPR issues in the context of ICT standardization
– No « one-size-fits-all » solution; different approaches can work in different environments
19
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
The Common Patent Policy attempts to balance different and divergent interests to promote broad participation and wide implementation of the RecommendationThe main stakeholders in ICT standardization are the:– Patent holder– Manufacturer– Service provider– Government
20
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common patent PolicyInterests of the patent holder
– Wants to share its innovations and obtain a (reasonable) return on research investments
– Rejects any obligation to disclose its licensing terms and conditions
Interests of the manufacturer– Often, the manufacturer is a patent holder itself whose
technology is required by other manufacturers– Requires stability and certainty with regard to patent
commitments– May have concerns about the level of royalties, but is
generally supportive of RAND policies
21
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Interests of the service provider– Business model is dependent upon the distribution of low-
cost equipment and on the sales of value-added services– Has conflicting interests – to reduce the products costs
while encouraging patent holders to participate in standardization activities
Interests of the Government– Promotes the public interest – i.e. broadest use possible of
standards / interoperability– Generally favors IPR policies that have strong disclosure
obligations and requirements that patents be licensed after adoption of the standard
– Royalty-free licensing is, sometimes, considered as a preference
22
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Fundamental Principles:– Early disclosure of essential patents– Accessibility of essential patents to
everyone under reasonable and non-discriminatory conditions (“RAND”)
23
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
To whom does the disclosure rule apply?– « Any party participating in the work of the ITU
… »When should disclosure take place?– « at the outset » or « as early as possible »
Is disclosure mandatory?– Strictly speaking, NO.– Common Patent Policy uses the word « should »
and not « shall »– The Guidelines use the word « encourage »– However, there may be severe consequences in
case of failure to disclose a patent – Dell case
24
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
What should be disclosed?– « essential patents ». Neither the Policy nor the
Guidelines include a definition of these terms.
Is disclosure limited to my own patents?– No. Consistent with the Policy, Recommendation
A.8, Article 3.6.1, stipulates that “any party…should draw the attention of the Director of TSB to any known patent…either of their own or of other organizations.”
25
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Do I have to conduct patent searches?– information should be provided on a best
effort basis and there is no requirement for patent searches
How do I disclose my patents?– The forms attached to the Policy must be
used
26
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
A word of wisdom regarding the duty to disclose: since patents are complex legal instruments, in case of doubt…
27
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
28
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Patent Statement and Licensing Declaration Form– The main purpose of the Declaration Form is to
ensure that patent holders will agree to license their technology on a royalty-free basis or under RAND conditions
– Despite its name, the Licensing Declaration Form is not a License Agreement
– Generally speaking, the Declaration Form provides three options
Option 1 - Royalty-freeOption 2 - RANDOption 3 - No license
29
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
– Patent Holders must use the Declaration Form– Declaration Forms must be sent to the attention of the
TSB Director and not to the Study Group– Declaration Forms (licensing commitments) cannot be
withdrawnTwo exceptions – obvious errors and more favorable licensing conditions
– Recommendation A.1, Article 1.4.6: “Chairmen will ask, during each meeting, whether anyone has knowledge of patents the use of which may be required to implement the Recommendation…”.
An oral response (declaration) during a SG meeting is not sufficient to conform to the Policy – Declaration Form must also be filled-in and returned to the TSB Director
30
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
In case Option 3 is selected (unwillingness to license), the patent holder must provide the following information– Patent number– An indication of which portions of the
Recommendation is affected by the patent– A description of the patent claim
As long as there is no indication of a patent holder selecting option 3, the Recommendation may be approved
31
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
The Policy does not forbid the disclosure of licensing terms – information may be provided by Patent Holders, if they so desireHowever, the Policy does not allow SG to discuss these licensing terms or to take a position concerning the essentiality, scope, validity of any claimed patentsDiscussions in SG as to whether or not patented material should be included in a Recommendation is allowed
32
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Patent Database– May be found at
www.itu.int/ipr/IPRSearch.aspx?iprtype=PS– Reflects the information received– Is not certified to either be complete or
accurate
33
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Common Patent Policy
Disputes– ITU will not engage in settling disputes
between a patent holder and a licensee
34
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Part 3
Overview of the Software Copyright Guidelines
35
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Software Copyright Guidelines
Two documents to consider– Software Copyright Guidelines– Software Copyright Statement and
Licensing Declaration
These documents may be found at www.itu.int/ITU-T/ipr/Unlike the Common Patent Policy, these Guidelines are specific to ITU-T
36
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Software Copyright Guidelines
What is the objective of these Guidelines?– To remind SG that ITU strongly discourages the
inclusion of copyrighted software owned elsewhere than in ITU. Why?
The nature of copyright protection makes it possible to work around a copyright to develop alternative solutions
– To provide a process in the exceptional situations where a Study Group still believes that software copyrighted outside ITU must be included in a Recommendation
37
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Software Copyright Guidelines
In practice, the vast majority of software are submitted to ITU without restrictions« Mass-market software » or « off-the-shelf software» should not be included in Recommendations
38
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Software Copyright Guidelines
Software Copyright Statement and Licensing Declaration Form
– Again, the main purpose of the Declaration Form is to ensure that copyright holders will agree to license their software on a royalty-free basis or under RAND conditions
– Despite its name, the Licensing Declaration Form is not a License Agreement
– Generally speaking, the Declaration Form provides three options
Free LicensesRAND LicensesNo license
39
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Software Copyright Guidelines
Software Copyright Database– May be found at
www.itu.int/ipr/IPRSearch.aspx?iprtype=SW
– Reflects the information received– Is not certified to either be complete or
accurate
40
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Part 4
Overview of the Trademark Guidelines
41
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Trademark Guidelines
One document to consider– Guidelines related to the inclusion of
Marks in ITU-T Recommendations– No Declaration Forms
These documents may also be found at www.itu.int/ITU-T/ipr/Unlike the Common Patent Policy, these Guidelines are specific to ITU-T
42
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Trademark Guidelines
What is the objective of these Guidelines?– To provide SG with general information on
the issues to be considered regarding the use of marks
– To provide specific guidelines on how marks should be referenced
43
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Trademark Guidelines
Generally, if referenced properly, no need to obtain permission from the mark owner– No permission required to refer
descriptively in a Recommendation to a third party’s technology
Recommendations should not appear to endorse any particular product or brand
44
Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008
Any questions?