TIA IPR Standing Committee Report to TIA Technical Committee Normative References and IPR

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TIA IPR Standing Committee Report toTIA
Technical Committee Normative References and
IPR

• October 21, 2005
• Paul Vishny, Chair
• Dan Bart, TIA

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Introduction

• Patented Technology may be used in Standards
• TIA and ANSI Intellectual Property Rights (IPR)
  Policies expressly contemplate and authorize the
  use of patented technology in standards

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TIA IPR Policy

• There is no objection in principle to drafting a
  Standard in terms that include the use of a
  patented invention, if it is considered that
  technical reasons justify this approach.

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TIA is Company and Technology Neutral

• In addition to the TIA IPR Policy, TIAs Board
  direction is to be company and technology
  neutral, and not considering a companys patented
  technology would be non-neutral with respect
  to that company and its technology.
• Failure to consider technology merely because it
  is patented can itself be a TIA legal risk on
  antitrust grounds.

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Basic Elements of IPR Policies

• The basic elements of SDO IPR Policies are that
  if a patented invention is essential to
  complying with a standard,
• i.e., an Essential Patent - only the claim(s)
  of a patent (whenever issued) which is (are)
  necessarily infringed by the practice of a
  Normative portion of a TIA Standard (TIA
  Engineering Manual),
• THEN the SDO must have a Letter of Assurance
  (LoA) from the Patent Holder offering a patent
  licensing commitment on terms that are Reasonable
  and Non-Discriminatory (RAND) and in accordance
  with the SDO IPR Policy

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Basic Elements of IPR Policies

• TIA Engineering Manual
• Prior to approval of a proposed Standard, a
  record of the Patent Holder's Statement shall be
  placed and retained in the files of TIA. TIA will
  forward a copy of the statement to ANSI when the
  document in process is related to the development
  of an American National Standard.

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Normative Elements at TIA

• Normative (mandatory) elements - those elements
  of a Standard which always must be complied with
  in order to claim conformity with the Standard.
• Normative (alternate) elements - those elements
  of a Standard, any one or more of which may be
  complied with in order to claim conformity with
  the Standard.
• Normative (optional) elements - those elements of
  a Standard which may be selected in order to
  claim conformity with the Standard and which if
  selected, must be implemented as specified in the
  Standard.

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Where are Normative Elements Found?

• Normative Elements can be found
• In the text of the Standard itself
• In Normative Annexes
• In Normative References

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Normative Issues

• If the Normative elements which may have patented
  technology are in
• The Standards text itself Process as normal
• A Normative Annex Process as normal
• A Normative Reference from another ANSI SDO, ISO,
  IEC, ITU, ETSI (presumed compliant with
  TIA/ANSI Policies and consistent LoA is on file
  at that SDO) Process as normal
• BUT IF . . .

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Normative Issues

• If the Normative elements which may have patented
  technology are in
• A Normative Reference from other External
  Organizations (other than ANSI SDOs, IEC, ISO,
  ITU, ETSI), then availability of compatible IPR
  Policies and LoAs becomes an issue.

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Normative Issues- External Organizations

• Is the POLICY of the External Organization (EO)
  compatible?
• Even if compatible now, Policies can change over
  time
• Are the LoAs compatible with TIAs IPR Policy?
• What if 3rd Party Patent Holder, not
  participating in External Organizations process,
  is disclosed, and no LoA is obtained?
• How does TIA Standard User get assurance of
  patent license on at least RAND Terms?

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Normative Issues- External Organizations

• External Organizations that have raised legal
  review concerns at TIA
• CDPD Forum
• OMA
• IETF
• WiFi Alliance
• AMTA, etc.
• There are more than 400 Fora/Consortia in ICT
  Sector!

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Normative Issues- External Organizations

• Getting an organization to review or change its
  IPR Policy to be compatible with TIA/ANSI can be
  a formidable and time-consuming task
• ETSI IPR Policy concerns took 5 years to resolve
• TIA debated its IPR Policy changes over 2 years
• ANSI is debating its IPR Policy revisions over 3
  years
• OMA is now going on 2 years
• OMA documents removed as references for ITU input
• IETF issues have surfaced and TIA documents on
  hold

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Normative Issues- External Organizations - IETF

• What if IETF is advised 3 companies likely own
  essential patents A, B, and C.
• A and B are in IETF WG and give LoAs
• C is not participating in WG, and IETF WG does
  not seek or get a LoA from C
• Can TIA Formulating Groups (FGs) make Normative
  Reference to that WGs RFC?
• Where is the RAND LoA commitment from Company C
  for TIA Standard User?

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Recommendation to TC from IPR SC

• If Normative References from EOs were treated
  at TIA as though they were Normative Annexes to
  the TIA Standard that references them (in a
  process sense)
• TIA FG Chairs ask for identification of any known
  Patent Holders for any patented technology
  essential to the EO Normative Reference
• If Disclosures are made related to EO Normative
  References, then handled at TIA in similar way to
  a disclosure made if patented technology were in
  a Normative Annex, i.e., TIA Secretariat needs to
  see if LoAs compatible with TIA IPR Policy are on
  file.

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Recommendation to TC from IPR SC

• In case described on Slide 14, TIA Secretariat
  should find LoAs on file at EO from Companies A
  and B
• IF Compatible LoAs, then inquiry ends for A and B
• For Company C, no LoA would be on file at EO
  (i.e., IETF)
• TIA Standards Secretariat would need to seek
  (under TIA IPR Policy) a LoA from Company C and
  have it filed at TIA.
• This type approach is being used in the case of
  OMA for disclosed IPR Holders who are NOT OMA
  members, since OMA Policy is only binding on OMA
  members
• More TIA Staff effort required than if technical
  requirements (i.e., normative elements) had been
  in Normative Annex, but hopefully avoids the
  delay trying to get EO Policy changed

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Consensus Recommendation to TC from IPR SC
(10/14/05)

• The concept is that our TIA process encouraging
  early disclosure of essential IP will be applied
  not only to essential IP that is known to be
  explicitly included in the TIA standard, but also
  any essential IP that is known to be contained in
  a normatively-referenced document.
• it is the obligation of the Standards Department
  to follow up on any claims of essential IP by
  requesting that the claimant fill out the
  required form indicating that they are willing to
  license the essential IP to all users on
  reasonable and non-discriminatory terms.
• Thus, this obligation will be extended to not
  only essential IP that is explicitly included in
  the standard under development, but also any
  essential IP that is known to be incorporated by
  reference, i.e., included in documents referenced
  normatively.

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Consensus Recommendation to TC from IPR SC
(10/14/05)

• Some concern was raised over the possibility that
  despite any assurances on file with the EO, it
  cannot be expected that these assurances will
  carry forward.
• New assurance letters may need to be sought since
  the original assurance letter may be limited and
  will not apply to the application noted in the
  TIA standard.
• This is true if the original assurances are
  restrictive in their application.
• Thus, the TC IPR SC should continue to meet as
  needed and monitor implementation issues.

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Consensus Recommendation to TC from IPR SC
(10/14/05)

• DECISION The IPR Standing Committee approves
  the Chairs proposal for handling the normative
  referencing of documents of non-traditional
  SDOs/consortia whose IPR policy is inconsistent
  with TIAs IPR policy, in particular the attempt
  to treat such documents as text appearing in TIA
  standards, subject to the same IPR disclosure
  requirements as contained in the TIA IPR policy.

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Recommendation to TC from IPR SC and TIA Staff

• Technical Committee should approve and direct
  this approach by FG Chairs and TIA Secretariat
• TIA Staff should provide conference call training
  to Engineering Committee leadership
• For TIA Standards on hold, this approach and
  disclosures and related follow-ups for LoAs (if
  needed), should occur asap to allow standards to
  be published soon
• TIA IPR SC should continue reviewing EO Normative
  Referencing as implementation issues emerge,
  along with its other assigned tasks

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Questions?