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2 A Comparison of SSO Policies and Practices
Pages 31-50

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From page 31...
... American National Standards Institute (ANSI) Internet Engineering Task Force (IETF)
From page 32...
... ETSI has an extensive IPR policy, which evolves over time, sometimes under the influence of the European Commission. Since 2003, it has collaborated with the European Patent Office to expand the latter's database to include thousands of technical contributions made to ETSI as part of the standard process.
From page 33...
... Through a series of revisions of its IPR policy, OASIS has developed a new and more flexible approach to assigning obligations relating to essential claims in patents. In particular, in 2005 it adopted a "multi-mode" IPR regime permitting a working group to operate under a set of guidelines that either would or would not allow participants to require payment of licensing fees under a FRAND arrangement.
From page 34...
... Consistent with the basic charge to our committee, the findings in the background paper, and those summarized in this chapter, are descriptive in nature rather than assessments of effectiveness, which in any event would depend on a large set of economic, technological and social factors for each SSO. Later chapters of this report offer deeper assessments of some key standards-related IPR policy questions.
From page 35...
... Note also that the word "necessary" is sometimes used in place of "essential."  Licensing commitments and licensing obligations are used inter changeably to cover a wide set of activities, including letters of assur ance, declarations of licensing positions, licensing statements, licens ing undertakings, and similar pledges.  Disclosure refers to the various processes within which a firm or in dividual informs an SSO and other entities that it owns or is aware of a patent, or patent application, that may be relevant for a standard.
From page 36...
... Thus, we encourage readers interested in spe 3 Of the 12 SSOs surveyed, the IPR policies of six include essential copyrights and those of the others do not. IETF includes them in essential IPR and treats them in the same manner as patents.
From page 37...
... This chapter complements his study by taking a more detailed look at the policies of a smaller number of organizations. We find substantial variation in aspects of IPR policies that were not examined by Lemley, such as the definition of essentiality, rules for disclosure of third party patents, the mechanisms for establishing licensing commitments, and the scope and revocability of those commitments.
From page 38...
... include commercially essential patents within their IPR policies regarding disclosure and licensing commitments and one (ETSI) explicitly rules the concept out.
From page 39...
... rules regarding licensing commitments or statements of non-commitment. While conceptually distinct, disclosure and licensing commitments are often intertwined.
From page 40...
... However, since it may be made late in the standard development process, the need to avoid infringement of a SEP that is eventually not made available for licensing can result in a significant loss of time before a standard can be adopted. To be more precise, all of the surveyed SSOs except the HDMI Forum, which has no formal disclosure mechanism, obligate those who submit a technology they wish to include in the standard either to disclose the specific patents they own and believe would be essential, or at least to indicate that they likely hold SEPs.
From page 41...
... A risk of the emphasis on disclosure of specific patents that potentially could be essential to a standard -- a policy aimed at minimizing the chances of missing relevant SEPs -- is over-disclosure of IP by participants who reveal more SEPs and other patents than ultimately necessary to implement the final version of the standard. Such problems could be reduced, and the list of clearly essential patents clarified, by combining formal patent searches with efforts to assess essentiality after the standard is defined.
From page 42...
... It is noteworthy that the majority of SSOs do not specify any procedure for updating information about essential IPR, such as the denial of a patent application or the expiration or legal cancellation of a patent, although the SSOs with data-sharing arrangements with the European Patent Office (EPO) are able to track developments in a patent application and in patent families.
From page 43...
... In practice, many ETSI members disclose more than one patent per family. The publicly available ETSI database now contains information on patent families due to a recent program of cooperation between ETSI and the EPO.8 Common disclosure templates and public release The increasing prevalence of SEPs, especially in ITC standards, has raised the importance of precisely stated disclosure requirements and licensing commitments that share considerable commonality.
From page 44...
... Narrower and more recent SSOs, primarily consortia such as VITA, the HDMI Forum, and the NFC Forum, maintain the confidentiality of their documents. Licensing commitments9 In general, SSOs aim to ensure that licenses for SEPs are available to all implementers, or that owners will not assert their essential IPR against firms that develop standards-compliant products.
From page 45...
... The great majority of SSOs in the sample specify that licensing commitments are irrevocable, although a few of them permit "upgrades" under which terms may be replaced later by conditions that are objectively more favorable to licensees. Some organizations, including ITU/ISO/IEC, ETSI, OASIS, VITA, W3C, and NFC Forum, specify that specific licensing agreements are also irrevocable before expiration in order to prevent their cancellation against the will of
From page 46...
... Ex ante most restrictive terms A patent owner, at an early stage in the standards development process, may make binding commitments regarding the maximum royalty fee or other licensing terms it will seek in licensing contracts. In principle, such information can help inform SSO decisions on whether to include the patented technology in the standard.
From page 47...
... In this section we review the approaches taken by our surveyed SSOs.13 In summary terms, five SSO policies -- ITU/ISO/IEC, ETSI, IEEE, VITA, and HDMI Forum -- state that obligations must be transferred with patent ownership, thereby requiring that the patent holder bind its successor-in-interest. OASIS mentions the issue only in the context of bankruptcy.
From page 48...
... An ANSI IPR policy task force is currently considering whether the ANSI patent policy or related guidelines should address the transfer question and, if so, how. Finally, none of the SSO policies specifies that the organization or other parties need to be notified of ownership changes.
From page 49...
... Particular elements of policy that could be made more transparent include patent-information updates, the lack of information associated with blanket disclosures, and the failure to make disclosures and licensing commitments public. Publicly available SSO patent disclosure databases -- and possibly licensing commitment databases -- could help implementers, licensors, and many other stakeholders become more confident about how to secure rights, evaluate claims of essentiality, establish royalty fees if any, and understand competition and antitrust concerns.


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