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ITU Workshop on Standards and Intellectual Property Rights

(IPR) Issues

Asok Chatterjeeon behalf of ATIS

ATIS Intellectual Property Rights Activities

New Delhi, India, 19-20 December 2011

International Telecommunications Union

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ATIS In Brief

Core & access networks;Telecom management;Wireless systems and technologies;Ordering, provisioning and billing of services;Emergency services;Network reliability;

Cloud services;IPTV architecture, content protection;Automatic identification (e.g., RFID);Network interconnection and interoperability; andNetwork synchronization.

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:

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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:

ATIS Membership

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Leadership – ATIS Board

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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.

ATIS IPR Policy

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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; orUnder 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.

ATIS IPR Policy

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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.

ATIS IPR Policy Review

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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; andDeveloped 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.”

ATIS IPR Policy Review

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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.

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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; andThe impact of the need for access to intellectual property on the use or development of standards.

SoS Request for Information

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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.

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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; andIPR policies should be accessible, clear and unambiguous.

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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; andHow 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).

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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, consensus-based 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.

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Questions

For more information about ATIS’ IPR Policy, please contact:

Thomas GoodeGeneral CounselATIStgoode@atis.org

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Supplementary Slides

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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_Project_P11-1204.pdf

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ATIS Member Companies Participating in the ATIS IPR Ad

Hoc Committee

ADTRAN, Inc. Alcatel-LucentAT&T CenturyLinkCiscoCorningEricsson Hewlett Packard

MicrosoftMotorola MobilityNetTrafficQUALCOMMRIMTekelecT-MobileVerizon

For a full list of ATIS members, please see: http://www.atis.org/membership/members.asp.

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ATIS Patent PolicyIf 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 holderPrior 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