1
What you need to know about
the new IEEE-SA patent policy
David Law
2007 Chair, IEEE-SA Standards Board
Patent Committee (PatCom)
Vice-chair, IEEE 802.3 Working Group
Agenda
2
• Overview
• PatCom Tutorial slides
• Review of new ‘Call for patents’ slides
•Q&A
Overview
3
• The new IEEE-SA Patent Policy was
developed by the IEEE-SA Standards
Board Patent Committee (PatCom) as a
recommendation
• In addition to the members of the Patent
Committee, a wide variety of participants
was invited to contribute to the effort
• Comments were dealt with publicly and all
records of decisions about those
comments were made public
Overview
4
• The recommendations from PatCom were approved
by the IEEE-SA Standards Board and the IEEE-SA
Board of Governors.
• This new policy takes effect 30th April 2007
• The Policy
is described in the IEEE Standards
Association Standards Board Bylaws
• The Implementation
is described in the IEEE
Standards Association Standards Board Operations
Manual
• These slides are not
the policy and often use slightly
different or simpler words to improve understanding.
Transition
5
• New Policy will be effective 30 April 2007
• At that time all working groups will
transition to it immediately
– Existing Assurances are still valid
– No need to obtain assurance on the new form
– Previous Submitters may, at their option,
submit an updated assurance if they wish to
add rates, terms, etc.
Transition
6
• Education and Support Material is being
developed
• Will consist of
– Tutorial
– Frequently Asked Questions (FAQs)
– Updated Working Group “Call for Patents” Slides
– Updated sample letter requesting a Letter of
Assurance
– Updated IEEE Standards Companion material
– Updated Flow Chart
Conclusion
7
• Before incorporation into the official IEEE-
SA Standards Board Bylaws, Operations
Manual and Letter of Assurance
documents, the new versions are available
from:
– Bylaws: http://grouper.ieee.org/groups/pp-dialog/drafting-
committee/Final/bylaws-BOG-ballot-FINAL.pdf
– Ops Man: http://grouper.ieee.org/groups/pp-dialog/drafting-
committee/Final/opman-FINAL.pdf
– LOA Form: http://grouper.ieee.org/groups/pp-dialog/drafting-
committee/Final/loa-FINAL.pdf
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2007 IEEE-SA Patent policy
Introduction and guide to IEEE-SA
patent policy effective April 30
th
2007
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Inclusion of Potential Essential
Patent Claims
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Inclusion of Essential Patent
Claims in standard
IEEE standards may be drafted in terms that include the use of
Essential Patent Claims. If the IEEE receives notice that a [Proposed]
IEEE Standard may require the use of a potential Essential Patent
Claim, the IEEE shall request licensing assurance, on the IEEE
Standards Board approved Letter of Assurance form, from the patent
holder or patent applicant. The IEEE shall request this assurance
without coercion.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 1
“Essential Patent Claim” shall mean any Patent Claim the use of which
was necessary to create a compliant implementation of either
mandatory or optional portions of the normative clauses of the
[Proposed] IEEE Standard when, at the time of the [Proposed] IEEE
Standard’s approval, there was no commercially and technically
feasible non-infringing alternative. An Essential Patent Claim does not
include any Patent Claim that was essential only for Enabling
Technology or any claim other than that set forth above even if
contained in the same patent as the Essential Patent Claim.
IEEE-SA Standards Board Bylaws Subclause 6.1, Para 6
“Patent Claim(s)” shall mean one or more claims in issued patent(s) or
pending patent application(s).
IEEE-SA Standards Board Bylaws Subclause 6.1, Para 8
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Inclusion of Essential Patent
Claims in standard
• Essential Patent Claim
– In issued or pending patent applications
– Either mandatory or optional portions of standard
– Determined as of time of the standards approval
• Necessary to create compliant implementation
• No commercially and technically feasible non-infringing alternative
– Doesn’t include Enabling Technology
• Unless functionally necessary or a normative requirement of the standard
• Patent claims related to C language compiler are an example
• Assurance only applies to Essential Patent Claims
• Some claims in a patent may be essential, some not
• Potential Essential Patent Claims can be included
–But DO NOT discuss
• Interpretation, validity or essentiality of patents/patent claims
– For these purposes essentiality is based on assertion of holder
• Letter of Assurance form is now only acceptable template
– Modified Letter of Assurance form will not be accepted.
• Filling in the form is not considered a modification.
– ‘Free form’ letters will no longer be accepted
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Call for patents
The chair or the chair’s delegate of an IEEE standards-developing working
group or the chair of an IEEE standards Sponsor shall be responsible for
informing the members of the working group that if any individual believes that
Patent Claims might be Essential Patent Claims, that fact should be made
known to the entire working group and duly recorded in the minutes of the
working group meeting. This request shall occur at every standards-developing
meeting.
The chair or the chair's delegate shall ask any patent holder or patent applicant
of a Patent Claim that might be or become an Essential Patent Claim to
complete and submit a Letter of Assurance in accordance with Clause 6 of the
IEEE-SA Standards Board Bylaws. Information about the draft standard will be
made available upon request.
IEEE-SA Standards Board operations Manual Subclause 6.3.2
• Call shall be made at every standards-development meeting
– Working Group, Task Force, Task Group, Study Group, Ad Hocs, conference calls
– Working Group chair or designee makes the call
• State that if an individual believes a patent claim might be an Essential Patent
Claims, such individual should make the Working Group aware of this.
– Record in minutes that call for patents was made
– Record in minutes any response
• When informed, Working Group chair shall contact holder requesting a LOA
– Sample letter provided in standards companion
• [http://standards.ieee.org/guides/companion ].
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Duty on participants
In order for IEEE’s patent policy to function efficiently,
individuals participating in the standards development
process: (a) shall inform the IEEE (or cause the IEEE to
be informed) of the holder of any potential Essential
Patent Claims of which they are personally aware and
that are not already the subject of an existing Letter of
Assurance, owned or controlled by the participant or the
entity the participant is from, employed by, or otherwise
represents; …
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 14
• If you personally know of a potential Essential Patent Claim that
is not covered by an existing LOA
– Then if the potential Essential Patent Claim is owned by you or the
entity you are affiliated with, you have a duty to ensure that the
IEEE is informed of the holder
• See IEEE-SA Standards Board Operation Manual subclause 5.3.3.1
‘Disclosure of affiliation’ from more definition of affiliation
– This includes corporate affiliates
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Third party claims
In order for IEEE’s patent policy to function efficiently,
individuals participating in the standards development
process: … (b) should inform the IEEE (or cause the
IEEE to be informed) of any other holders of such
potential Essential Patent Claims that are not already the
subject of an existing Letter of Assurance.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 14
• If you personally know of a potential Essential Patent Claim that is
not covered by an existing LOA
– Then if the potential Essential Patent Claim is owned by a third party,
the IEEE encourages you to ensure the IEEE is informed of the holder
– This encouragement is particularly strong
• The third party may not be a participant in the standards process
• Other participants expect good faith
• To inform the IEEE of the holder you could for example
– Inform the Working Group Chair
– Ensure that IEEE receives a LOA
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Timing
If the patent holder or patent applicant provides an assurance, it should do so
as soon as reasonably feasible in the standards development process. This
assurance shall be provided prior to the Standards Board’s approval of the
standard. This assurance shall be provided prior to a reaffirmation if the IEEE
receives notice of a potential Essential Patent Claim after the standard’s
approval or a prior reaffirmation.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 2
• Early assurance is encouraged and expected
– The more information the better when selecting between proposals
• Identification can be made at any time
– Just inform the Working Group Chair
– Whether in the meeting or otherwise
• Deadlines
– Prior to Standards Board approval of standard
– Prior to Standards Board approval of reaffirmation
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What if an LOA cannot be obtained
An asserted potential Essential Patent Claim for which an assurance cannot be
obtained (e.g., a Letter of Assurance is not provided or the Letter of Assurance
indicates that assurance is not being provided) shall be referred to the Patent
Committee.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 2
• If there is no LOA for an asserted potential Essential Patent Claim:
– Inform IEEE-SA Standards Board Patent Committee (PatCom)
• PatCom will consider
• May make recommendation to IEEE-SA Standards Board
– Ultimately IEEE-SA Standards Board will decide
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Distribution of LOAs
Copies of an Accepted LOA may be provided to the working group, but shall
not be discussed, at any standards working group meeting.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 6
Upon written request, the IEEE will make available copies of any Accepted
Letter of Assurance and its attachments. Letters received after 31 December
2006 shall be posted on the IEEE-SA website.
IEEE-SA Standards Board Operations manual Subclause 6.3, Para 3
• Accepted LOA can be distributed in meetings
• But remember:
– Don’t discuss interpretation, validity or essentiality of patents/patent claims
– Don’t discuss specific license rates, terms or conditions
• LOAs received after 31-Dec-2006 will be made available on web
• Existing LOAs available by contacting PatCom administrator
– Activity underway to add these to web as well
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Legal compliance and other issues
5.3.10 Legal compliance and other issues
5.3.10.1 Compliance with laws
All IEEE-SA standards meetings shall be conducted in compliance with all applicable laws,
including antitrust and competition laws. In the course of IEEE standards development,
participants shall not engage in fixing product prices, allocating customers, dividing sales
markets, or other conduct that violates antitrust or competition laws.
5.3.10.2 Discussion of litigation, patents and licensing
No discussions or other communications regarding the following topics shall occur during
IEEE-SA working group standards-development meetings or other duly authorized IEEE-SA
standards-development technical activities:
– The status or substance of ongoing litigation
– The essentiality, interpretation, or validity of patent claims
– Specific patent license terms or other intellectual property rights, other than the
distribution of accepted letters of assurance as permitted under the IEEE-SA patent policy (see
section 6.2 of IEEE-SA Standards Board Bylaws)
5.3.10.3 Discussion of relative cost/benefit analyses
When comparing different technical approaches in IEEE-SA standards development technical
activities, participants may discuss the relative costs (in terms, for example, of percentage
increases or decreases) of different proposed technical approaches in comparison with the
relative technical performance increases or decreases of those proposals. The relative costs
may include any potentially Essential Patent Claims, but not the price at which compliant
products may or will be sold. Technical considerations should be the main focus of discussions
in IEEE-SA standards development technical activities.
IEEE-SA Standards Board operations Manual Subclause 5.3.10
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• All IEEE-SA standards meetings shall be conducted in compliance with all
applicable laws, including antitrust and competition laws.
• Don’t discuss fixing product prices, allocation of customers, or dividing sales
markets.
• Don’t discuss the status or substance of ongoing or threatened litigation.
• Don’t discuss specific license rates, terms or conditions.
• Don’t be silent if inappropriate topics are discussed… do formally object.
• Relative costs of different technical approaches may be discussed in
standards development meetings.
– May include licensing costs of essential patent claims, but only on a relative
basis
• This shall not be used to coerce Patent-holders who have chosen not to disclosed
maximum licensing fees into disclosure.
• A comparison however may state that costs of a particular technology approach are not
known
– Technical considerations remain primary focus
– For more information see "What You Need to Know About The IEEE Standards
Association's Antitrust and Competition Policy”.
Legal compliance and other issues
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Assurance
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Letters of assurance
‘A Letter of Assurance shall be either:
a) A general disclaimer to the effect that the Submitter without conditions will not
enforce any present or future Essential Patent Claims against any person or entity
making, using, selling, offering to sell, importing, distributing, or implementing a
compliant implementation of the standard; or
b) A statement that a license for a compliant implementation of the standard will be
made available to an unrestricted number of applicants on a worldwide basis without
compensation or under reasonable rates, with reasonable terms and conditions that
are demonstrably free of any unfair discrimination. At its sole option, the Submitter
may provide with its assurance any of the following: (i) a not-to-exceed license fee or
rate commitment, (ii) a sample license agreement, or (iii) one or more material
licensing terms.’
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 3, 4 & 5
• Shall be one of the following:
– Assurance that Essential Patent Claims will not be enforced
– Assurance that Essential Patent Claims will be licensed
• Reasonable and nondiscriminatory
– With or without monetary compensation
• At its sole option, Submitter may include
– Not-to-exceed rates
– Sample license agreement
– Material licensing terms
– A statement that submitter is unable or unwilling to grant license
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Assurance of non-awareness
‘The Submitter of the Letter of Assurance may, after Reasonable and Good
Faith Inquiry, indicate it is not aware of any Patent Claims that the Submitter
may own, control, or have the ability to license that might be or become
Essential Patent Claims.’
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 2
"Reasonable and Good Faith Inquiry” includes, but is not limited to, a
Submitter using reasonable efforts to identify and contact those individuals
who are from, employed by or otherwise represent the Submitter and who
are known to the Submitter to be current or past participants in the
development process of the [Proposed] IEEE Standard identified in a Letter
of Assurance, including, but not limited to, participation in a Sponsor Ballot
or Working Group. If the Submitter did not or does not have any
participants, then a Reasonable and Good Faith Inquiry may include, but is
not limited to, the Submitter using reasonable efforts to contact individuals
who are from, employed by, or represent the Submitter and who the
Submitter believes are most likely to have knowledge about the technology
covered by the [Proposed] IEEE Standard.
IEEE-SA Standards Board Bylaws Subclause 6.1, Para 9
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Assurance of non-awareness
• Submitter may state in LOA that it is not aware of any
Patent Claims that might be or become Essential Patent
Claims.
• After ‘Reasonable and Good Faith inquiry’
– For example reasonable efforts to Identify and contact
• If Submitter has participants in project identified in the LOA
– Current and past participants
» This includes, but not limited to, WG and sponsor ballots
• If the Submitter doesn’t have participants in project identified in the
LoA
– Those submitter believes likely to have knowledge of the technology
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Affiliates
The Submitter and all Affiliates (other than those Affiliates excluded in a
Letter of Assurance) shall not assign or otherwise transfer any rights in
any Essential Patent Claims that are the subject of such Letter of
Assurance that they hold, control or have the ability to license with the
intent of circumventing or negating any of the representations and
commitments made in such Letter of Assurance.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 7
This assurance shall apply to the Submitter and its Affiliates except
those Affiliates the Submitter specifically excludes on the relevant
Letter of Assurance.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 9
• Assurance shall not intentionally be circumvented through sale or transfer
• Assurance shall apply to affiliates unless explicitly excluded
– Those excluded may be contacted by the IEEE with a request for LOA
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Durability of assurance
The Submitter of a Letter of Assurance shall agree (a) to provide notice of a
Letter of Assurance either through a Statement of Encumbrance or by binding
any assignee or 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).
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 9
“Statement of Encumbrance” shall mean a specific reference to an Accepted
LOA or a general statement in the transfer or assignment agreement that the
Patent Claim(s) being transferred or assigned are subject to any encumbrances
that may exist as of the effective date of such agreement. An Accepted LOA is
an encumbrance.
IEEE-SA Standards Board Bylaws Subclause 6.1, Para 10
• Submitter agrees to:
– Notified assignees/transferees of the existence of assurance
• Either through stating in the agreement to Assign/Transfer
– The existence of a specific LOA
– Or by a general statement
• Or binding Assignees/Transferees to LOA
– Require the Assignee/Transferee to agree to similarly provide notice to subsequent
Assignee/Transferee
• Sets up a cascading notice requirement
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Duty to update assurance
If, after providing a Letter of Assurance to the IEEE, the Submitter becomes
aware of additional Patent Claim(s) not already covered by an existing
Letter of Assurance that are owned, controlled, or licensable by the
Submitter that may be or become Essential Patent Claim(s) for the same
IEEE Standard but are not the subject of an existing Letter of Assurance,
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 submitted Letter of
Assurance: (a) past or present participants in the development of the
[Proposed] IEEE Standard, or (b) the individual executing the previously
submitted Letter of Assurance.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 10
• If after submitting a LOA the submitter becomes aware of other patent
claims the first LOA commits the submitter to submit a new LOA
– Aware is either (a) past or present participants or (b) the individual executing the
previously submitted Letter of Assurance.
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The 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 withdrawal.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 11
“Accepted Letter of Assurance” and “Accepted LOA” shall mean a
Letter of Assurance that the IEEE-SA has determined is complete in
all material respects and has been posted to the IEEE-SA web site.
IEEE-SA Standards Board Bylaws Subclause 6.1, Para 2
Completed Letters of Assurance are accepted by the PatCom
Administrator or by PatCom upon referral from the PatCom
Administrator. Unless the Letter of Assurance is received from an
individual within the issuing organization who has clear authority for
intellectual property and legal matters, the IEEE Standards
Association (PatCom Administrator) shall send a certified letter,
return receipt requested, to the General Counsel or other
appropriate representatives of the issuing organization to confirm
receipt of the Letter of Assurance and to ensure that the Letter of
Assurance is factually correct and was submitted by an appropriate
individual within the issuing organization. No response to this letter,
other than the return receipt, is required.
IEEE-SA Standards Board Operations Manual Subclause 6.3, Para 2
Acceptance and validity of LOA
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• LOA irrevocable once submitted and accepted
– Accepted by
• Either PatCom administrator
• Or PatCom if referred by PatCom administrator
– Accepted when
• IEEE-SA determines LOA form is complete in all material respects
• And LOA has been posted to web site
http://standards.ieee.org/db/patents/index.html
• LOA must be signed by person with clear authority
– If not submitter will be contacted for confirmation
• LOA applies at a minimum from Standards approval to withdrawal
Acceptance and validity of LOA
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IEEE Public Notice Disclaimer
The IEEE is not responsible for identifying Essential
Patent Claims for which a license may be required, for
conducting inquiries into the legal validity or scope of
those Patent Claims, or for determining whether any
licensing terms or conditions are reasonable or non-
discriminatory.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 12
• IEEE-SASB Operations manual subclause 6.3.1 ‘Public notice’
• Two different versions of front matter text
– One for when no LOA on file, one where there are one or more
– Added by IEEE-SA publications editor during publication
• And remember:
– The working group is not responsible for the above
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Patent searches and no
Licenses by LOA
Nothing in this policy shall be interpreted as giving rise to
a duty to conduct a patent search. No license is implied
by the submission of a Letter of Assurance.
IEEE-SA Standards Board Bylaws Subclause 6.2, Para 13
• No duty
– But nothing prevents somebody from doing a search if they want to
• No license is granted by submitting an LOA
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Instructions for the WG Chair
The IEEE-SA strongly recommends that at each WG meeting the
chair or a designee:
z
Show slides #1 through #5 of this presentation
z
Advise the WG attendees that:
z
The IEEE’s patent policy is consistent with the ANSI patent policy and is described
in Clause 6 of the IEEE-SA Standards Board Bylaws;
z
Early identification of patent claims which may be essential for the use of standards
under development is encouraged;
z
There may be essential patent claims of which the IEEE is not aware. Additionally,
neither the IEEE, the WG, nor the WG Chair can ensure the accuracy or
completeness of any assurance or whether any such assurance is, in fact, of a
patent claim that is essential for the use of the standard under development.
z
Instruct the WG Secretary to record in the minutes of the relevant WG meeting:
z
That the foregoing information was provided and the five slides were shown;
z
That the chair or designee provided an opportunity for participants to identify patent
claim(s)/patent application claim(s) and/or the holder of patent claim(s)/patent
application claim(s) that the participants believes may be essential for the use of
that standard;
z
Any responses that were given, specifically the patent claim(s)/patent application
claim(s) and/or the holder of the patent claim(s)/patent application claim(s) that were
identified (if any) and by whom.
Note: WG includes Working Groups, Task Groups and other standards-developing committees.
(Optional to be shown)
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Highlights of the IEEE-SA Standards Board
Bylaws on Patents in Standards
z
Participants have a duty to tell the IEEE if they know (based on personal awareness) of
potentially essential patent claims they or their employer own
z
Participants are encouraged to tell the IEEE if they know of potentially essential patent
claims owned by others
z
This encouragement is particularly strong as the third party may not be a participant in the
standards process
z
Working Group required to request assurance
z
Early assurance is encouraged
z
Terms of assurance shall be either:
z
Reasonable and nondiscriminatory, with or without monetary compensation; or,
z
A statement of non-assertion of patent rights
z
Assurances
z
Shall be provided on the IEEE-SA Standards Board approved LOA form
z
May optionally include not-to-exceed rates, term and conditions
z
Shall not be circumvented through sale or transfer of patents
z
Shall be brought to the attention of any future assignees or transferees
z
Shall apply to affiliates unless explicitly excluded
z
Are irrevocable once submitted and accepted
z
Shall be supplemented if submitter becomes aware of other potential essential patent claims
z
A “Blanket Letter of Assurance” may be provided at the option of the patent holder
z
A patent holder has no duty to perform a patent search
z
Full policy available at http://standards.ieee.org/guides/bylaws/sect6-7.html#6
Slide #1
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6.2 Policy
IEEE standards may be drafted in terms that include the use of Essential Patent Claims. If the IEEE
receives notice that a [Proposed] IEEE Standard may require the use of a potential Essential Patent
Claim, the IEEE shall request licensing assurance, on the IEEE Standards Board approved Letter of
Assurance form, from the patent holder or patent applicant. The IEEE shall request this assurance
without coercion.
The Submitter of the Letter of Assurance may, after Reasonable and Good Faith Inquiry, indicate it is
not aware of any Patent Claims that the Submitter may own, control, or have the ability to license that
might be or become Essential Patent Claims. If the patent holder or patent applicant provides an
assurance, it should do so as soon as reasonably feasible in the standards development process. This
assurance shall be provided prior to the Standards Board’s approval of the standard. This assurance
shall be provided prior to a reaffirmation if the IEEE receives notice of a potential Essential Patent Claim
after the standard’s approval or a prior reaffirmation. An asserted potential Essential Patent Claim for
which an assurance cannot be obtained (e.g., a Letter of Assurance is not provided or the Letter of
Assurance indicates that assurance is not being provided) shall be referred to the Patent Committee.
A Letter of Assurance shall be either:
a) A general disclaimer to the effect that the Submitter without conditions will not enforce any present
or future Essential Patent Claims against any person or entity making, using, selling, offering to sell,
importing, distributing, or implementing a compliant implementation of the standard; or
b) A statement that a license for a compliant implementation of the standard will be made available to
an unrestricted number of applicants on a worldwide basis without compensation or under
reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair
discrimination. At its sole option, the Submitter may provide with its assurance any of the following:
(i) a not-to-exceed license fee or rate commitment, (ii) a sample license agreement, or (iii) one or
more material licensing terms.
IEEE-SA Standards Board Bylaws on Patents in Standards
Slide #2
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Copies of an Accepted LOA may be provided to the working group, but shall not be discussed, at any
standards working group meeting.
The Submitter and all Affiliates (other than those Affiliates excluded in a Letter of Assurance) shall not
assign or otherwise transfer any rights in any Essential Patent Claims that are the subject of such Letter
of Assurance that they hold, control or have the ability to license with the intent of circumventing or
negating any of the representations and commitments made in such Letter of Assurance.
The Submitter of a Letter of Assurance shall agree (a) to provide notice of a Letter of Assurance either
through a Statement of Encumbrance or by binding any assignee or 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).
This assurance shall apply to the Submitter and its Affiliates except those Affiliates the Submitter
specifically excludes on the relevant Letter of Assurance.
If, after providing a Letter of Assurance to the IEEE, the Submitter becomes aware of additional Patent
Claim(s) not already covered by an existing Letter of Assurance that are owned, controlled, or licensable
by the Submitter that may be or become Essential Patent Claim(s) for the same IEEE Standard but are
not the subject of an existing Letter of Assurance, 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 submitted Letter of Assurance: (a) past or present
participants in the development of the [Proposed] IEEE Standard, or (b) the individual executing the
previously submitted Letter of Assurance.
IEEE-SA Standards Board Bylaws on Patents in Standards
Slide #3
V4.0 - 3/9/2007 - This document is a draft for review and is subject to change.
The 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 withdrawal.
The IEEE is not responsible for identifying Essential Patent Claims for which a license may be required,
for conducting inquiries into the legal validity or scope of those Patent Claims, or for determining whether
any licensing terms or conditions are reasonable or non-discriminatory.
Nothing in this policy shall be interpreted as giving rise to a duty to conduct a patent search. No license
is implied by the submission of a Letter of Assurance.
In order for IEEE’s patent policy to function efficiently, individuals participating in the standards
development process: (a) shall inform the IEEE (or cause the IEEE to be informed) of the holder of any
potential Essential Patent Claims of which they are personally aware and that are not already the subject
of an existing Letter of Assurance, owned or controlled by the participant or the entity the participant is
from, employed by, or otherwise represents; and (b) should inform the IEEE (or cause the IEEE to be
informed) of any other holders of such potential Essential Patent Claims that are not already the subject
of an existing Letter of Assurance.
IEEE-SA Standards Board Bylaws on Patents in Standards
Slide #4
V4.0 - 3/9/2007 - This document is a draft for review and is subject to change.
Other Guidelines for IEEE WG Meetings
z
All IEEE-SA standards meetings shall be conducted in compliance with all
applicable laws, including antitrust and competition laws.
z
Don’t discuss the interpretation, validity or essentiality of patents/patent claims.
z
Don’t discuss specific license rates, terms or conditions.
z
Relative costs, including licensing costs of essential patent claims, of different technical approaches
may be discussed in standards development meetings.
z
Technical considerations remain primary focus
z
Don’t discuss fixing product prices, allocation of customers, or dividing sales
markets.
z
Don’t discuss the status or substance of ongoing or threatened litigation.
z
Don’t be silent if inappropriate topics are discussed… do formally object.
---------------------------------------------------------------
If you have questions, contact the IEEE-SA Standards Board Patent Committee Administrator at
[email protected] or visit http://standards.ieee.org/board/pat/index.html
See IEEE-SA Standards Board Operations Manual, clause 5.3.10 and "What You Need to Know About The IEEE
Standards Association's Antitrust and Competition Policy” for more details.
This slide set is available at http://standards.ieee.org/board/pat/pat-slideset.ppt
Slide #5
Q & A
