A Review of IPR Policy Revisions in the Wake of Antitrust Actions

A Review of IPR Policy Revisions in the Wake of
Antitrust Actions
Anne Layne-Farrar, Vice President
SIIT 2013
The Research Question
• Several competition agencies have suggested intervening
in the cooperative standard setting process
– Stated goal is to correct the perceived problems with patent
disclosure and FRAND licensing, such as patent holdup
• Numerous proposals for changes to SSO IPR policies have
been made as well
– Mandating rules governing what can and cannot be done with
“standard essential patents”
• But while several good studies of current policies, little
research on what SSOs have done over time to address
perceived problems
Private and Confidential
The Antitrust Debate Over Time
Private and Confidential
Patent Ambush, 1995
• ANSI (1967):
– No standard issued without
disclosure and RAND commitment
• ISO (1989):
– Obligation among patent holders to
disclose all essential patents
• IEEE (1995):
– Patented technology only included
if “necessary” and RAND
• TIA (2001):
– Patent disclosure form
• CEN/CENELEC (2001):
– Patent disclosure rules
• ETSI (1993):
– Disclosure obligation (licensing
• OASIS (2005):
– Patent disclosure obligation
• VITA (2007):
– Mandated patent disclosure
Private and Confidential
Breach of FRAND – Excessive Rates, 2005
• ANSI (1932):
– Inclusion of patented technologies
“considered favorably” if the patent
holder is “willing to grant such
rights as will avoid monopolistic
• TIA (2005):
– Patent can’t be used for monopoly
• OASIS (2005):
– Binding licensing commitment
• IEEE (2007):
– LOA w/optional term disclosure
• ETSI (1993) – briefly:
– Mandatory royalty disclosure
(removed in 1994 policy)
• VITA (2007):
– Mandatory term disclosure
• ISO/IEC/ITU (2008):
– Actions against non-FRAND
• CEN/CENELEC (2009):
– Binding licensing commitment
Private and Confidential
Breach of FRAND – Encumbrance, 2008
• IEEE (2007):
– Addition of a clause stating that the
transfer of essential patent rights
does not affect licensing terms
detailed in original LOA.
• ETSI (2008):
– Member to notify ETSI of patent
transfer and to notify transferee of
FRAND obligation
• ISO/IEC/ITU (2012):
– Addition of Section 1.7
“Assignment or Transfer of Patent
Rights” to Annex detailing that
licensing commitment are
transferred along with patent rights
Private and Confidential
Breach of FRAND – Injunctions, 2012
• ETSI (1993) – briefly:
– 1993 interim policy prohibited
injunctions as well as infringement
– 1994 interim policy removed both
• ITU (2013?):
– Announced it will release a
“compromise” during October
• ETSI (2013?):
– Scheduled a meeting to discuss
options in December
• Stay Tuned…
Private and Confidential
Concluding Remarks
• Ample evidence of proactive and timely responses to
antitrust issues as they emerge in public debate
• Not surprising that newly emerged issues not dealt with yet
– These are complex issues that will have different implications for
different SSOS
• So, no call for aggressive competition agency intervention
• Safe Harbor guidelines might be helpful
– Need to recognize broad diversity in SSO needs
• Industry differences, membership preferences, role and importance of IPR, etc.
all differ and all influence appropriate type/level of IPR rules
Private and Confidential

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