Updates approved by the IEEE SA Board of Governors - September 2022
transferee to the terms of such Letter of Assurance; and (b) to require its assignee or transferee to (i) agree
to similarly provide such notice and (ii) to bind its assignees or transferees to agree to provide such notice
as described in (a) and (b).
The Submitter and the Applicant should engage in good faith negotiations (if sought by either party)
without unreasonable delay or may litigate or, with the parties’ mutual agreement, arbitrate: over patent
validity, enforceability, essentiality, or infringement; Reasonable Rates or other reasonable licensing terms
and conditions; compensation for unpaid past royalties or a future royalty rate; any defenses or
counterclaims; or any other related issues. The Submitter of an Accepted LOA who has committed to make
available a license for one or more Essential Patent Claims agrees that it shall neither seek nor seek to
enforce a Prohibitive Order based on such Essential Patent Claim(s) in a jurisdiction unless the against an
implementer who is willing to negotiate in good faith for a license. Seeking further information upon initial
notice of infringement or choosing to litigate or arbitrate over any of the foregoing issues, however, does
not by itself mean that a party so choosing is unwilling to negotiate in good faith. fails to participate in, or
to comply with the outcome of, an adjudication, including an affirming first-level appellate review, if
sought by any party within applicable deadlines, in that jurisdiction by one or more courts that have the
authority to: determine Reasonable Rates and other reasonable terms and conditions; adjudicate patent
validity, enforceability, essentiality, and infringement; award monetary damages; and resolve any defenses
and counterclaims. In jurisdictions where the failure to request a Prohibitive Order in a pleading waives the
right to seek a Prohibitive Order at a later time, a Submitter may conditionally plead the right to seek a
Prohibitive Order to preserve its right to do so later, if and when this policy’s conditions for seeking, or
seeking to enforce, a Prohibitive Order are met.
Nothing in this policy shall preclude a Submitter and an implementer from agreeing to arbitrate over patent
validity, enforceability, essentiality, or infringement; Reasonable Rates or other reasonable licensing terms
and conditions; compensation for unpaid past royalties or a future royalty rate; any defenses or
counterclaims; reciprocal obligations; or any other issues that the parties choose to arbitrate.
Nothing in this policy shall preclude a licensor and licensee from voluntarily negotiating any license under
terms mutually agreeable to both parties.
If a Submitter becomes aware of additional Patent Claim(s) that are not already covered by an Accepted
Letter of Assurance, that are owned, controlled, or licensable by the Submitter, and that may be or become
Essential Patent Claim(s) for the same IEEE Standard, then such Submitter shall submit a Letter of
Assurance stating its position regarding enforcement or licensing of such Patent Claims. For the purposes
of this commitment, the Submitter is deemed to be aware if any of the following individuals who are from,
employed by, or otherwise represent the Submitter have personal knowledge of additional potential
Essential Patent Claims, owned or controlled by the Submitter, related to a [Proposed] IEEE Standard and
not already the subject of a previously Accepted Letter of Assurance: (a) past or present participants in the
development of the [Proposed] IEEE Standard, or (b) the individual executing the previously Accepted
Letter of Assurance.
A Letter of Assurance is irrevocable once submitted and accepted and shall apply, at a minimum, from the
date of the standard's approval to the date of the standard's transfer to inactive status.
Copies of an Accepted Letter of Assurance may be provided to participants in a standards development
meeting. Discussion of essentiality, interpretation, or validity of Patent Claims is prohibited during IEEE-
SA standards-development meetings or other duly authorized IEEE-SA standards-development technical
activities. IEEE-SA shall provide procedures stating when and the extent to which patent licensing terms
may be discussed (see subclause 5.3.10 of the IEEE-SA Standards Board Operations Manual).
The IEEE is not responsible for
1. Identifying Essential Patent Claims for which a license may be required;
2. Determining the validity, essentiality, or interpretation of Patent Claims;