5jul99 1 of 34 ieee patent policy presented to ieee802 montreal, qc, canada july 5, 1999 thomas c....

5Jul99 <[email protected]> 1 of 34

IEEE Patent Policy

Presented to IEEE802 Montreal, QC, Canada July 5, 1999

Thomas C. Wettach, Cohen & Grigsby

15th Floor,11 Stanwix Street, Pittsburgh, PA 15222-1319

TEL: +1 412.297.4840

E-Mail: [email protected]


Q. What is the IEEE patent Policy and the rationale behind it?

• Basically, the policy of IEEE is to permit a working group to use patented technology in the development of a standard if there is technical justification. By permitting the use of patented technology in a standard, the potential anticompetitive effect of the patent must be addressed.


Q. What is the IEEE patent Policy and the rationale behind it? (cont.)

• IEEE policy addresses this issue by requiring a letter of assurance from the patent owner stating that the patent can be be used free of charge to comply with the standard once it is approved or that the owner will make a license available on a nondiscriminatory basis and upon reasonable terms and condition.


Q. What is the IEEE patent Policy and the rationale behind it? (cont.)

• IEEE’s policy is for patents which are needed for compliance with the standard. If the standard can be compiled with without the use of patented technology, there is no need to obtain a letter of assurance, even if the use of patented technology is desirable or preferable or the best mode.


Q. How does the working group know if a patent is required to comply?

• IEEE’s policy requires that the working group chair make a call for patents or patent applications from members of the committee that may be relevant to the standard under development. This call should be made routinely during the course of the development.


Q. How does the working group know if a patent is required to comply? (cont.)

• Any patents referred to the chair should be cursorily reviewed for relevance and if deemed relevant from the review a letter to the patent owner should be sent. A form letter is provided in the IEEE Standards Companion.



• It is not the duty or province of the working group to do an in depth study or analysis of the patent to determine whether it is valid or would be infringed by compliance with the standard. It is the policy of the IEEE (Patent Committee) not to inquire into either aspect of the patent;



• rather, the committee will assume the need to have a license without analysis of the patent or its claims.

• If a patent owner advises the committee upon receipt for a letter of assurance that the patent does not apply, the Committee will not require a letter of assurance.


Q. What is the duty of Working Group members relative to raising patents?

• The duty of a member of working group is to advise the committee and the Chair of any patent that he or she knows of that may be relevant to practice of the proposed standard. This includes knowledge of patent applications as well. Where the is employed or associated with a company that has or is developing technology which is the subject matter of the proposed standard,


Q. What is the duty of Working Group members relative to raising patents? (cont.)

• he or she should make a reasonable inquiry of these persons in the company that are most likely to know if a patent or patent application exists directed to the technology. Currently, there is no duty on a company with a large patent portfolio or its employees to search its portfolio to find patents or applications that may be relevant or applicable.


Q. What is the duty of Working Group members relative to raising patents? (cont.)

• A member making a technical proposal to the group is under a higher duty to ascertain whether patents apply to the proposal, particularly if the proposal encompasses technology of that person’s employer. If the technology belongs to another, some inquiry of the other should be undertaken before making the proposal to avoid needless waste of time by the committee.


Q. What if a member does not disclose a patent known to he or she?

• IEEE does not have a policy directed to intentional withholding of information upon the call of the chair. However, it should be noted that in an analogous situation the Federal Trade Commission in FTC v. Dell held that the failure to raise the patents in the development of the standard in a situation where the committee members should have known its existence, rendered the company’s patents unenforceable


Q. What if a member does not disclose a patent known to he or she? (cont.)

• against those complying with the standard. It is entirely possible that in the future, the FTC could hold that the practice of deliberately concealing existence of a necessary patent constitutes a violation of §5 of the Federal Trade Commission Act and constitute an unfair trade practice if the patent is asserted against those using the standard.


Q. What should be done when the chair receives a letter of assurance?

• If the letter of assurance that is sent to the chair is the model IEEE Letter, it should be placed in the file. If the letter deviates from the model letter or patent owner refuses to provide a letter of assurance for any reasons other than the patent does not apply, it should be forwarded to the IEEE patent Committee for resolution.


Q. What happens where a standard being developed embraces patent technology for which a letter of

assurance cannot be obtained?

• If the standard cannot be written in such a way that compliance cannot be achieved without infringing the patent, then work on the standard must be discontinued. The IEEE, and ANSI, require that a license be available.


Q. What happens to a standard in which it is later found that a patent is required for compliance?

• If it is determined after the publication of a standard that a patent license is required to comply, there is nothing IEEE can do until it is time revise the standard. At that time, if a letter of assurance is not obtainable, the standard will not be revised and will cease to be an existing IEEE standard.


Q. What happens to a standard in which it is later found that a patent is required for compliance?

(cont.)

• All IEEE standards contain a disclaimer regarding the possibility that the practice of the subject matter contained in the standard may be covered by patents. Thus it is the obligation of the user of the standard to assure it checks the applicability of patents and obtains the necessary license.


CONSTITUTION, ARTICLE I, SECTION 8:

• The Congress Shall Have Power:

• To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.


ANTITRUST

• The principle provisions of the Sherman antitrust laws of the United States provide:

• Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is declared to be illegal. Every person who shall make any contract or engage in any combination of conspiracy hereby declared to be illegal shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $10,000,000 if a corporation, or, if any other person, $350,000, or by imprisonment not exceeding three years, or by both said punishments, in the discretion of the court. Section 2 Sherman Act


ANTITRUST (cont.)

• Further: Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several States, or with foreign nations, shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $10,000,000 if a corporation, or, if any other person, $350,000, or by imprisonment not exceeding three years, or by both said punishments, in the discretion of the court. Section 2 Sherman Act


ANTITRUST (cont.)

• IEEE’s policy prohibits any discussion which constitutes or implies an agreemetn or tacit understanding concerning:

• prices, discount, or terms or conditions of sale;• profits, profit margins, or data;• market shares, sales territories, or markets;• allocation of customers, markets or territories• discriminatory licensing provisions


ANTITRUST (cont.)

• standards or certification programs that unreasonably restrain trade;

• selection, rejection, or termination of customers or supplier;

• restricting territory or markets in which a company may sell products

• restricting the customers to whom a company may sell;• bidding or refraining bidding; or• any matter which restricts a participants independence in

setting prices, establishing production and sales levels, choosing the markets in which the member operates and selects its customers and suppliers.


IEEE-SA Standards Board Bylaws

• 6. Patents• IEEE standards may include the known use of

patent(s), including patent applications, if there is technical justification in the opinion of the standards-developing committee and provided the IEEE receives assurance from the patent holder that it will license applicants under reasonable terms and conditions for the purpose of implementing the standard.


IEEE-SA Standards Board Bylaws (cont.)

• This assurance shall be provided without coercion and prior to approval of the standard (or reaffirmation when a patent becomes known after initial approval of the standard). This assurance shall be a letter that is in the form of either

• a) A general disclaimer to the effect that the patentee will not enforce any of its present or future patent(s) whose use would be required to implement the proposed IEEE standard against any person or entity using the patent(s) to comply with the standard or


IEEE-SA Standards Board Bylaws (cont.)

• b) A statement that a license will be made available to all applicants without compensation or under reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair discrimination


Patent Request Letter

• To Whom It May Concern:• The IEEE ( name of working group ) working group is in the process of developing

a standard, IEEE Pnnn ( name of standard/recommended practice/guide ), that may utilize ( technology using the patent ). As such, there is the possibility that this standard may be covered by patents that ( company ) holds or patent applications. A copy of the draft standard is included. Please review and advise as to whether or not your patents apply to information in the document.

• The IEEE patent policy requires a release letter such as the one attached if your technology applies. I would appreciate it very much if your patent department would provide such a letter. I hope to hear from you by ( date ). If I receive no response by that date, I will have to presume that your company has no patent issues with regard to this draft standard.

• Thank you for your assistance in this matter.• Sincerely,• Gary R. Chair, Chair• Attachments: Patent permission letter• http://standards.ieee.org/guides/companion/annexa.html#corr20


Patent Response Letter

• (on company letterhead)• ( date )• Company Officer or Designee• Company Address• Dear Gary R. Chair:• This letter is written in response to your letter of ( date ), which requested that ( company )

confirm to the IEEE that we will provide licenses under our ( country ) Patent # with respect to the proposed IEEE Pnnn standard. In that regard:

• In the event the proposed standard is adopted and the standard cannot be practiced without the use of the cited patent, ( company ) agrees upon written request to grant a nonexclusive license under such patent on a nondiscriminatory basis and on reasonable terms and conditions.

• This letter does not grant any right to the IEEE with respect to ( company ) copyrights or other intellectual property rights that relate to the proposed standard. Any party interested in the license described above may write to ( name of contact person ) at the address on the letterhead.

• Sincerely,• Jane Q. Company• ( company )• http://standards.ieee.org/guides/companion/annexa.html#corr21


IEEE-SA Standards Board Operations Manual 6. Copyright, trademark, and patents

• The patent policy is set forth in clause 6 of the IEEE-SA Standards Board Bylaws.

• Patent holders shall submit letters of assurance to the IEEE Standards Department (to the attention of the Administrator, Intellectual Property) before the time of IEEE-SA Standards Board review for approval. The IEEE will provide contact information about the patent holder upon request.


IEEE-SA Standards Board Operations Manual 6. Copyright, trademark, and patents (cont.)

• Unless the letter of assurance is received from an individual within the issuing organization who has clear authority for intellectual property and/or legal matters, the IEEE Standards Department (Administrator, Intellectual Property) shall send a certified letter, return receipt requested, to the General Counsel 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.



• 6.3.1 Public notice• The following notice shall appear when the

IEEE receives assurance from a known patent holder prior to the time of publication that a license will be made available to all applicants either without compensation or under reasonable rates, terms, and conditions that are demonstrably free of any unfair discrimination.



• Attention is called to the possibility that implementation of this standard may require use of subject matter covered by patent rights. By publication of this standard, no position is taken with respect to the existence or validity of any patent rights in connection therewith. The IEEE shall not be responsible for identifying patents for which a license may be required by an IEEE standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention. A patent holder has filed a statement of assurance that it will grant licenses under these rights without compensation or under reasonable rates and nondiscriminatory, reasonable terms and conditions to all applicants desiring to obtain such licenses. The IEEE makes no representation as to the reasonableness of rates and/or terms and conditions of the license agreements offered by patent holders. Further information may be obtained from the IEEE Standards Department.



• If the IEEE has not received letters of assurance prior to the time of publication, the following notice shall appear:

• Attention is called to the possibility that implementation of this standard may require use of subject matter covered by patent rights. By publication of this standard, no position is taken with respect to the existence or validity of any patent rights in connection therewith. The IEEE shall not be responsible for identifying patents for which a license may be required by an IEEE standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.



• 6.3.2 Submittal

• Through the working group, the Sponsor chair shall request that known patent holders submit a statement either that the patent does not apply to the standard or that licenses will be made available without compensation or under reasonable rates, terms, and conditions. This assurance shall be obtained without coercion and submitted to the IEEE at the earliest practical time prior to the approval of an IEEE standard. The IEEE encourages early disclosure to the working group of patent information that might be relevant to the standard.



• While standards may include the known use of patents if there is technical justification, the working group should not attempt to determine whether or not a patent applies. The working group shall accept the view of the patent holder.

• 6.3.3 Disclaimer• The IEEE shall not be responsible for identifying

all patents for which a license may be required by an IEEE standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

5jul99 1 of 34 ieee patent policy presented to ieee802 montreal, qc, canada july 5, 1999 thomas c....

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