Thomas Goode General Counsel, ATIS April 20, 2015 ATIS Intellectual Property Rights Policy Update Introduction ATIS develops ICT standards through its 15 technical committees, the Boards Technology and Operations (TOPS) Council and other
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Presentation Transcript
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Thomas Goode
General Counsel, ATIS
April 20, 2015 ATIS Intellectual Property Rights Policy Update<br>
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Introduction ATIS develops ICT standards through its 15 technical committees, the Board’s Technology and Operations (TOPS) Council and other initiatives.
ATIS has developed over 1100 standards (not including best practices, TOPS Council and other initiatives, 3GPP and oneM2M transpositions, etc.)
In addition to technical issues, ATIS focuses on operational issues, such as ordering, billing, numbering, network resiliency, interconnection, etc.
U.S. regulators rely on ATIS’ standards in lieu of, or as part of, the development of regulations.
Examples: telephone number assignments, wireless emergency alerting, 911 location accuracy, call termination, Communications Assistance for Law Enforcement Act (CALEA) compliance. 2<br>
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ATIS IPR Policy Section 10.4 of ATIS’ Operating Procedures details ATIS’ patent disclosure and assurance policy.
The policy is based on the policy of the American National Standards Institute (ANSI).
The same policy applies to all ATIS deliverables, including American National Standards (ANS) and non-ANS, and to all but one of ATIS’ committees and forums.
ATIS’ Device Solutions Initiative (DSI) has a separate OP and patent disclosure policy.
ATIS’ policy encourages the disclosure of relevant patented inventions at the “earliest possible time.” 3<br>
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ATIS IPR Policy Under ATIS patent policy, if ATIS receives notice that a deliverable may require use of a patented invention, the patent owner is asked to provide an assurance stating that: (a) it does not hold such a patent; (b) it will make available licenses on RAND terms, with or without compensation, or (c) it is not willing or is unable to make a RAND license available.
Any writing such statement submitted on or after January 31, 2011, does not satisfy ATIS’ policy unless it expressly states that the assurance is irrevocable.
ATIS reminds participants of its patent and antitrust policies at the beginning of each virtual and face-to-face meeting; this notice includes a call for disclosures. 4<br>
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Recent Changes to ATIS IPR Policy ATIS recently updated its patent policy to require patent assurance statements to indicate that:
The owner (or party authorized to make assurances on its behalf) of a patent subject to a licensing statement will include in documents transferring ownership of such patents sufficient language to ensure that the licensing assurance is binding on the transferee, and that the transferee will include appropriate provisions in the event of future transfers with the goal of binding each successor-in-interest.
The assurance is intended to be binding on successors-in-interest regardless of whether such provisions are included in the relevant transfer documents. 5<br>
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Disclosure and Assurance Statements ATIS has a patent disclosure and assurance form to facilitate compliance with its policy; however, use of the form is not required.
ATIS posts patent disclosure and assurance statements on its website (http://www.atis.org/legal/patentinfo.asp).
Patent disclosures are organized by document identification number.
ATIS has approximately 240 patent assurance statements posted; some apply to multiple deliverables.
When substantive changes are made to deliverables, ATIS reaches out to parties that have made patent assurance statements to verify that the statement should be associated with the modified deliverable. 6<br>
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ATIS IPR Ad Hoc Committee ATIS has an IPR ad hoc committee, which was formed in 2010 to provide input on IPR related issues to ATIS staff and Board.
Issues may be brought before the ad hoc by members, the Board or ad hoc participants.
The ad hoc reports to the Board, which must approve actions taken by the ad hoc.
The ad hoc has been dormant over the past year -- no issues have been raised for discussion by the group. 7<br>
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ATIS’ Open Source Work ATIS’ Device Solutions Initiative (DSI) develops network-agnostic, client-side APIs that simplify access to proprietary network APIs.
The DSI Operating Procedures permit the development of either open source or traditional standards.
When a project is initiated within DSI, the group decides which of two IPR policies (RAND or Open Source) will apply to that work.
Once the group selects an IPR policy for a particular project, it may not be changed.
An Open Source License Agreement is included as an Annex to the Operating Procures; open source licenses for a DSI deliverable will be granted by ATIS in substantially the form of this agreement, as may be modified or amended as appropriate for the particular DSI deliverable. 8<br>
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ATIS Participation in oneM2M ATIS is a founding Partner Type 1 in oneM2M, which is developing machine-to-machine specifications.
oneM2M allows member-based organizations to participate as a:
Partner Type 1 (PT1) -- must have IPR policies that support a FRAND regime; or
Partners Type 2 -- must have a compatible IPR policy or provide written assurance that any contributions will be made pursuant to a PT1 policy.
oneM2M’s legal subcommittee, with input from many GSC participating standards organizations, examines IPR issues pertaining to the development of oneM2M deliverables; current IPR issues include:
Normative references to non-oneM2M deliverables;
Development of open source deliverables based on oneM2M specs;
Appropriate registration and use of oneM2M trademarks by Partners Type 1. 9<br>
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Questions Questions about ATIS’ IPR policy may be directed to:
Tom Goode
General Counsel
tgoode@atis.org 10<br>
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Supplementary Slides<br>
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ATIS Patent Policy Excerpt from Section 10.4 of the ATIS Operating Procedures:
Prior 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:
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
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:
Under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or
Without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination. 12<br>
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ATIS Patent Policy Excerpt from Section 10.4 of the ATIS Operating Procedures (cont’d):
Such assurance shall indicate that the patent holder (or party authorized to make assurances on its behalf) will include in any documents transferring ownership of patents subject to the assurance provisions sufficient to ensure that the commitments in the assurance are binding on the transferee, and that the transferee will similarly include appropriate provisions in the event of future transfers with the goal of binding each successor-in-interest.
The assurance shall also indicate that it is intended to be binding on successors-in-interest regardless of whether such provisions are included in the relevant transfer documents. 13<br>
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Links to Relevant ATIS Documents ATIS Operating Procedures:
http://www.atis.org/legal/op.asp
