Transcript ITU Workshop on Standards and Intellectual Property Rights (IPR) Issues ATIS Intellectual Property Rights Activities Asok Chatterjee on behalf of ATIS New Delhi, India, 19-20 December 2011 International Telecommunications Union.

ITU Workshop on Standards and
Intellectual Property Rights
(IPR) Issues
ATIS Intellectual Property
Rights Activities
Asok Chatterjee
on behalf of ATIS
New Delhi, India, 19-20 December 2011
1
International
Telecommunications
Union
ATIS In Brief
ATIS is a standards development organization
that is accredited by the American National
Standards Institute (ANSI).
Formed in 1983, ATIS provides strategic,
operational and technical planning for the
Information and Communications Technologies
(ICT) industry:
Core & access networks;
Telecom management;
Wireless systems and
technologies;
Ordering, provisioning and
billing of services;
Emergency services;
Network reliability;
2
Cloud services;
IPTV architecture, content
protection;
Automatic identification
(e.g., RFID);
Network interconnection
and interoperability; and
Network synchronization.
ATIS Membership
ATIS’ CTO-level Board and broad membership
defines its strategic vision.
Technical committees of Subject Matter Experts
(SMEs) integrate market-driven objectives and
priorities with needed solutions.
Unique Formula – Connects CTO-level leadership
and insight with subject matter experts (SMEs)
doing the work.
200+ ATIS member companies represent key
stakeholders from the global industry:
Wireless and wireline service
providers;
Broadband providers;
Internet service providers;
3
Consumer electronics
companies;
Equipment manufacturers; and
U.S. Govt. agencies.
Leadership – ATIS Board
ADC
ADTRAN
Alcatel-Lucent
AT&T
Aviat Networks
Bell Canada
BT
Capgemini U.S.
CenturyLink
Cspire Wireless
Cisco Systems
Ciena
Clearwire
Corning
Ericsson
Fujitsu
GENBAND
Harris Corporation
Hewlett-Packard
4
Hitachi
Huawei
Hypercube
Intel
Intrado
JDSU
Juniper Networks
LG Electronics
Marconi Pacific
Microsoft
Motorola Mobility
Motorola Solutions
Movius
NEC Corporation
NetTraffic
NeuStar
NSN
QUALCOMM
RIM
Rogers
Samsung
Sprint
SureWest
Symmetricom
Syniverse
Tekelec
Telcordia
TDS
Tellabs
TELUS
Time Warner
Cable
T-Mobile USA
Transaction
Network Services
Verivue
Verizon
ZTE
ATIS IPR Policy
ATIS follows the Patent Policy established by its
accrediting body, ANSI.
ATIS is an active participant in the ANSI IPR Policy
Committee responsible for maintaining this policy.
Section 10.4 of the ATIS Operating Procedures
details ATIS’ patent policy; this policy:
Encourages the disclosure of relevant patented
inventions at the “earliest possible time.”
Requires that disclosures be made in writing; use of an
ATIS patent disclosure form is optional.
Prohibits the discussion or negotiation of licensing terms
within ATIS committees.
Notes that ATIS is not responsible for interpreting or
making any determination regarding the validity or
scope of a patent.
5
ATIS IPR Policy
Under ATIS’ patent policy, prior to approval of a
standard, an assurance must be received:
To the effect that such party does not hold or does not
currently intend to hold any invention the use of which
would be required for compliance with the standard; or
That a license will be made available to applicants
desiring to utilize the license for the purpose of
implementing the standard:
Without compensation; or
Under reasonable terms and conditions that are
demonstrably free of any unfair discrimination.
Any writing submitted as of January 31, 2011, for
the purpose of expressing a licensing assurance,
shall not qualify as such an assurance unless it
expressly states that the assurance is
irrevocable.
6
ATIS IPR Policy Review
ATIS’ IPR policy falls under the purview of its
Board.
The Board approves changes to the IPR Policy and
receives reports on ATIS’ public policy work associated
with this policy.
In November 2006, the Board formed an IPR Policy
Review Task Force.
This task force, comprised of subject matter experts
from ATIS Board companies, was tasked with
determining whether ATIS’ IPR policy should be revised
to allow for more effective standards development.
7
ATIS IPR Policy Review
During its review, the IPR Policy Review Task
Force:
Noted absence of problems under this policy;
Recommended a change to the IPR policy to address the
irrevocability of licensing assurances; and
Developed a voluntary patent disclosure and assurance
form.
At the end of 2010, the task force was
transformed by the ATIS Board into a permanent
ad hoc committee to provide continuing input on
IPR related issues, as appropriate, to ATIS staff
and Board.
Like the task force, the ad hoc committee is open to
representatives from any ATIS Board company; other
full ATIS members may participate as “observers.”
8
IPR-Related Public Policy Positions
ATIS takes positions on policy issues that may
affect its IPR Policy and/or the efficient and
effective development of standards.
ATIS’ positions generally urge U.S. governmental
agencies:
Not to disrupt the careful balancing of interests that
have been undertaken by SDOs like ATIS in the
development of their IPR policies.
Not to mandate changes to the way that SDO policies
address IPR disclosure or licensing that could create
inefficiencies in the development process.
Not to require the development or use of royalty-free
standards.
To participate in standard development activities.
9
SoS Request for Information
On March 7, 2011, ATIS responded to a Request
for Information (RFI) from the National Science
and Technology Council’s Subcommittee on
Standards (SoS).
The RFI focused on U.S. government participation in
standards (including Smart Grid, Cybersecurity and
Emergency Communications Interoperability).
It also sought information on:
The effectiveness of standards processes;
The impact of these processes on competitiveness;
and
The impact of the need for access to intellectual
property on the use or development of standards.
10
ATIS Response to SoS RFI
ATIS’s response stated a concern with efforts to
fundamentally change the standards process, and
opined that there was no necessity to do so.
ATIS commented that processes could be improved
through increased governmental participation in, and
support for, existing standards processes.
U.S. governmental agencies have effectively
participated in the private development of ATIS
standards.
Industry standardization efforts continue to be effective.
ATIS’ IPR policy facilitates effective, timely standards
development.
11
SoS RFI Report
On October 14, the SoS released a report based
on input received; this report noted that input:
Indicated that there is no single “ideal” IPR policy –
SDOs are in the best position to establish effective
policies;
IPR policies should take into account the needs of both
IPR holders and implementers; and
IPR policies should be accessible, clear and
unambiguous.
12
FTC Request for Comments
On June 14, ATIS provided input to the U.S.
Federal Trade Commission (FTC) in response to
its Request for Comments on issues such as:
Practical and legal issues that arise from collaborative
standards setting when standards incorporate
technologies that are protected by IPR;
Disclosure of patent rights, RAND licensing
commitments, and ex ante disclosure and/or negotiation
of licensing terms; and
How SDO policies, including specifically IPR policies,
address the problem of “hold up” (defined as a demand
for higher royalties or other more costly licensing terms
after the standard is implemented than could have been
obtained before the standard is chosen).
13
ATIS Response to FTC Request
ATIS’ comments observed that IPR policies of
SDOs such as ATIS are not in need of change.
SDOs such as ATIS continually review their policies and
make modifications as necessary, based on industry
consensus.
Mandating changes to SDO IPR policies could create
imbalances in various interests and create inefficiencies
in the development process.
Many of the issues raised in the Request have been
previously considered and found unnecessary,
impractical and contrary to open, balanced, consensusbased processes.
The success of ATIS’ policies can be seen in ATIS’
diverse membership, the breadth of its work program
and in the development of widely-implemented
standards.
14
Questions
For more information about ATIS’ IPR Policy,
please contact:
Thomas Goode
General Counsel
ATIS
[email protected]
15
Supplementary
Slides
16
Links to ATIS
Public Policy Filings
ATIS maintains a link to all its public policy
filings, including those referenced in this
presentation:
http://www.atis.org/legal/publicpolicy.asp
ATIS’ submission in response to SoS RFI:
http://www.atis.org/legal/Docs/NIST/NIST_RFI.pdf
ATIS submission to FTC Request for Comments:
http://www.atis.org/legal/Docs/MISC/ATIS_Comments_Pr
oject_P11-1204.pdf
17
ATIS Member Companies
Participating in the ATIS IPR Ad
Hoc Committee
ADTRAN, Inc.
Alcatel-Lucent
AT&T
CenturyLink
Cisco
Corning
Ericsson
Hewlett Packard
Microsoft
Motorola Mobility
NetTraffic
QUALCOMM
RIM
Tekelec
T-Mobile
Verizon
For a full list of ATIS members, please see:
http://www.atis.org/membership/members.asp.
18
ATIS Patent Policy
If ATIS or ANSI receives a notice that a proposed American
National Standard may require the use of a patented
invention, the procedures in this clause shall be followed.
10.4.2 Statement from patent holder
Prior to approval of such a proposed ANS, ATIS shall receive from
the identified party or a party authorized to make assurances on
its behalf, in written or electronic form, either:
(a) assurance in the form of a general disclaimer to the effect that
such party does not hold and does not currently intend holding any
essential patent claim(s); or
(b) assurance that a license to such essential patent claim(s)will be
made available to applicants desiring to utilize the license for the
purpose of implementing the standard either:
(i) under reasonable terms and conditions that are demonstrably free
of any unfair discrimination; or
(ii) without compensation and under reasonable terms and
conditions that are demonstrably free of any unfair discrimination.
For ATIS’ full patent policy, please see ATIS’ Operating
Procedures at: http://www.atis.org/legal/op.asp
19