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

Anne Layne-Farrar, Vice PresidentSIIT 2013

Private and Confidential2

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 Confidential3

The Antitrust Debate Over Time

Private and Confidential4

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

• ETSI (1993):– Disclosure obligation (licensing

Undertaking)

Reactive

• IEEE (1995): – Patented technology only included

if “necessary” and RAND commitment

• TIA (2001):– Patent disclosure form

• CEN/CENELEC (2001):– Patent disclosure rules

• OASIS (2005):– Patent disclosure obligation

• VITA (2007):– Mandated patent disclosure

Private and Confidential5

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…”

• ETSI (1993) – briefly:– Mandatory royalty disclosure

(removed in 1994 policy)

Reactive

• TIA (2005): – Patent can’t be used for monopoly

• OASIS (2005): – Binding licensing commitment

• IEEE (2007): – LOA w/optional term disclosure

• VITA (2007): – Mandatory term disclosure

• ISO/IEC/ITU (2008):– Actions against non-FRAND

• CEN/CENELEC (2009):– Binding licensing commitment

Private and Confidential6

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

Private and Confidential7

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…

Private and Confidential8

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