tutorial on intellectual property rights (iprs) antoine dore legal officer itu legal affairs unit...

Tutorial on intellectual property rights (“IPRs”)

Antoine DoreLegal Officer

ITU Legal Affairs UnitPhone: +41 22 730 6338

Email: antoine.dore@itu.int

Tutorial for leadership teams of ITU-T study groups, TSAG, tariff groups and focus groups

Geneva, 15-16 December 2008

Tutorial for SG & TSAG leadership teamsGeneva, 15-16 December 2008

Part 1

Overview of the main forms of intellectual property

The main forms of intellectual property

CopyrightsPatentsTrademarks

(artistic works)(inventions)(product identity)

Copyrights

• Rights given to creators for their literary and artistic works

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

Main rights conferred upon the copyright owner

ReproductionPublicationDistributionSale/leaseTranslation

• ©

Main restrictions to copyright

Copies for private purposesCopies for archiving purposesQuotations

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

What can be patented?

Inventions– Must be new– Must be useful– Must not be obvious

Application evaluated by a patent examiner

Protection granted by patents

Monopoly on the invention, typically for a period of 20 yearsNo protection on the description

Trademarks

A distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise

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

Formalities

Trademark®-vs-

Trademark™

Protection

Term Registration

SymbolCost

Copyrights

the expression of an idea

life of the author + 50 years

none required

not required

for protection

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

® or ™, use of symbol

not strictly

required for

protection

moderately

expensive

Part 2

Overview of the “Common Patent Policy for ITU-T/ITU-R/

ISO/IEC” and its related Guidelines and Forms

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/

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

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

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

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

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

Fundamental Principles:– Early disclosure of essential patents– Accessibility of essential patents to

everyone under reasonable and non-discriminatory conditions (“RAND”)

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

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.”

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

A word of wisdom regarding the duty to disclose: since patents are complex legal instruments, in case of doubt…

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

– 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

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

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

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

Disputes– ITU will not engage in settling disputes

between a patent holder and a licensee

Part 3

Overview of the Software Copyright Guidelines

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

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

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

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

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

Part 4

Overview of the Trademark Guidelines

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

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

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

Any questions?

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