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

Report
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
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Private and Confidential
The Antitrust Debate Over Time
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Private and Confidential
Patent Ambush, 1995
Proactive
• ANSI (1967):
– No standard issued without
disclosure and RAND commitment
• ISO (1989):
– Obligation among patent holders to
disclose all essential patents
Reactive
• IEEE (1995):
– Patented technology only included
if “necessary” and RAND
commitment
• TIA (2001):
– Patent disclosure form
• CEN/CENELEC (2001):
– Patent disclosure rules
• ETSI (1993):
– Disclosure obligation (licensing
Undertaking)
• OASIS (2005):
– Patent disclosure obligation
• VITA (2007):
– Mandated patent disclosure
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Private and Confidential
Breach of FRAND – Excessive Rates, 2005
Proactive
• ANSI (1932):
– Inclusion of patented technologies
“considered favorably” if the patent
holder is “willing to grant such
rights as will avoid monopolistic
tendencies…”
Reactive
• 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
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Private and Confidential
Breach of FRAND – Encumbrance, 2008
Proactive
• IEEE (2007):
– Addition of a clause stating that the
transfer of essential patent rights
does not affect licensing terms
detailed in original LOA.
Reactive
• 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
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Private and Confidential
Breach of FRAND – Injunctions, 2012
Proactive
• ETSI (1993) – briefly:
– 1993 interim policy prohibited
injunctions as well as infringement
ligation
– 1994 interim policy removed both
prohibitions
Reactive
• ITU (2013?):
– Announced it will release a
“compromise” during October
meeting
• ETSI (2013?):
– Scheduled a meeting to discuss
options in December
• Stay Tuned…
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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
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Private and Confidential

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