ATIS Intellectual Property Rights Policy Update
Thomas Goode
General Counsel, ATIS
April 20, 2015
ATIS Intellectual Property
Rights Policy Update
I
n
t
r
o
d
u
c
t
i
o
n
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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
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l
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c
y
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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
A
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I
S
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P
R
P
o
l
i
c
y
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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
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c
y
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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
D
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a
n
c
e
S
t
a
t
e
m
e
n
t
s
•
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
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P
R
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d
H
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c
C
o
m
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t
e
e
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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
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’
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p
e
n
S
o
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r
c
e
W
o
r
k
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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
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r
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c
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p
a
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o
n
i
n
o
n
e
M
2
M
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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
Q
u
e
s
t
i
o
n
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Questions about ATIS’ IPR policy may be directed to:
Tom Goode
General Counsel
tgoode@atis.org
10
Supplementary
Slides
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T
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S
P
a
t
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n
t
P
o
l
i
c
y
•
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:
a)
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
b)
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:
1)
Under reasonable terms and conditions that are
demonstrably free of any unfair discrimination; or
2)
Without compensation and under reasonable terms and
conditions that are demonstrably free of any unfair
discrimination.
12
A
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I
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P
a
t
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n
t
P
o
l
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c
y
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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
L
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A
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ATIS Operating Procedures:
–
http://www.atis.org/legal/op.asp
•
ATIS Device Solutions Initiative Operating Procedures:
–
http://www.atis.org/dsi/docs/DSI%20Operating%20Pr
ocedures%20Final.pdf
•
ATIS Public Policy Filings:
–
http://www.atis.org/legal/publicpolicy.asp
14
ATIS develops ICT standards and focuses on operational issues like ordering, billing, and network resiliency. The ATIS IPR policy encourages early disclosure of patented inventions and recently updated its patent policy to ensure binding licensing assurances.
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Presentation Transcript
ATIS Intellectual Property Rights Policy Update Thomas Goode General Counsel, ATIS April 20, 2015
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
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
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
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
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
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
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
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
Questions Questions about ATIS IPR policy may be directed to: Tom Goode General Counsel tgoode@atis.org 10
Supplementary Slides
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: a) 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 b) 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: 1) Under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or 2) Without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination. 12
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
Links to Relevant ATIS Documents ATIS Operating Procedures: http://www.atis.org/legal/op.asp ATIS Device Solutions Initiative Operating Procedures: http://www.atis.org/dsi/docs/DSI%20Operating%20Pr ocedures%20Final.pdf ATIS Public Policy Filings: http://www.atis.org/legal/publicpolicy.asp 14
