Comments on ITU-T Patent Policy
来源：知识产权学术与实务研究网 作者：By Zhang Ping* 时间：2009-03-07 阅读数:
International standardization is no longer a matter of simply codifying existing technologies. IPR issues are an increasing challenge for standardization. At its inception in 1988/89, ETSI insisted that it was born into a “new environment of European standardization” [1] in which emerging standards would be “littered with IPRs”. And today, “one of the most difficult areas in standards development these days is that of intellectual property rights (IPR)”. [2]
ITU-T has been making great effort in rising to the challenge and has got many accomplishments. It deserves mention that ITU-T/ITU-R/ISO/IEC World Standards Cooperation agreed in Feb. 2006 on the draft Common ITU/ISO/IEC Patent Policy which is based on ITU-T patent policy. And this meeting is going to discuss the Draft Common Patent Policy, Draft Guidelines for the Common Policy, Draft Declaration form for the Common Policy.
At this conjunction, it deserves to make some exploration into ITU-T patent policy. I am going to discuss three questions here. They are related to dissimilarity between ITU-T Patent Policy and ANSI Patent Policy, provisions in ITU-T patent policy regarding IPR declaration and licensing commitment.
1. Dissimilarity between ITU-T Patent Policy and ANSI Patent Policy: Competition Concerns
Guidelines for Implementation of ITU-T Patent Policy (hereunder referred as Guideline) argue that “The underlying principle of the Statement is the same as in other standardization organizations which have similar patent rights policies (e.g. ISO, IEC, CEN/CENELEC, ANSI, and IEEE).” It may be true on the face of the letters. But in light of ITU mission, ITU patent policy shall be different from that of ANSI.
International standards have as its essential role to advance international trade. IPR incorporation into international standards raises much competition concerns. According to ISO/IEC GUIDE 59: 1994 (e), standards shall not be written so as to impede or inhibit international trade. [3] International standards shall not be written as a means to fix price, nor exclude competition or otherwise inhibit commerce than necessary. [4]
However, if patent is to be included into international standards, market power over the global market may be created. “The act of selection [in standardization] has consequences that can lead to reduced competitiveness and increased ex post market power, though competition may exist in the technology market in advance of the selection of a proprietary standard. ” [5] The ITU-T patent policy was and is expected to address more threat of submarine patent ，to reduce uncertainty inherent in the said RAND licensing commitment and to address some of the competition concerns associated with proprietary standards.
Even in U.S, specter is raised that an epidemic of “patent ambush” situations in which patent holders deliberately and secretively manipulate a standards setting project to enhance unfairly the value of their intellectual property. There is also much complaint about the vague “reasonable and non-discriminatory terms”. “Virtually no SSOs specify the terms on which licenses must be granted beyond the vague requirement that they be ‘reasonable’ and ‘non-discriminatory.’ [6] The settlement of disputes on patent rights (licensing, royalties, etc.) is thus totally left to the parties concerned. But “private licenses are normally confidential. The result is uncertainty over the cost and scope of patent licenses that may not prove much better than having no policy at all.” [7]
Not surprisingly, there is earnest call for delineated
If we compare the patents declared in ITU-T patent declaration database and those present in the patent pools supporting the Recommendation, we are afraid there may exist an epidemic of “patent ambush” and there are real competition concerns in respect of international standards. For example, with respect to Recommendation H.264, there are 85 patent declarations, almost one third of which have no declaration as for Patent Title, Patent Number, Patent Country, and Foreign Counterparts.[11] However, we find more that 130 essential patents list in AVC Patent Portfolio administered by MPEG_LA. [12] The patent listed by the MPEG_LA match rather badly with those declared via ITU. But this is not the whole picture. Bearing in mind that Via Licensing is also issue patent call to organize a patent pool to support AVC, and dozens of essential patents may be present there. In order to put the patent into the pool that support the international standard, patent holder must pay independent expert group for appraisal of patent essentiality in respect of the international standard. We see there is incentive for patent holders to make patent search and cost appear not to be the obstacle.
There may be dozens of reasons for ITU-T not to impose duty of disclosure, not to clarify
A special management group can also be established as suggested by some expert in order to make the standard setting process more effective and at the same time much less subject to competitive abuse. The management group is “…made up either exclusively or mostly of outside experts and that would do the primary work required by the standard setting process. This group would report to the governing board, and with input from the members would design the standard, evaluate the alternative technical solutions available, cost out the initial design, and be in charge of redesign and negotiations over royalties in an effort to get the total price of the technology package as low as possible.” [13]
2. Patent Declaration
Guidelines for Implementation of ITU-T Patent Policy “encourage the early disclosure and identification of patents or pending patent applications that may relate to Recommendations under development.” [14] However, I believe ITU-T should impose the obligation to identify patents or pending patent applications as precise and updated as possible.
A glance at ITU-T Patent Statement and Licensing Declaration Database, a lot of declarations are without mentions of Patent Title, Patent Number, Patent Country, and Foreign Counterparts. And some of them seem rather old. They are not subsumed under the General Patent Statement and Licensing Declarations indicating the willingness to license. It opens to debate whether such general patent statement will truly help standardization in terms of evaluating alternative specifications and reducing implementation uncertainty inherent in standards possibly implicated by IPR. In addition, there is always risk of over-disclosure in hope of increasing royalty. [15]
The aim of the disclosure requirement is to provide information about specific IPR against specific technology under standardizing process to evaluate alternative technology, or to help market player to select standards, to reduce infringement risk and not to be hold-up by IPR holders. There are patent policies requiring specific disclosure. According to Intellectual Property Rights in IETF Technology, “the disclosure must list the numbers of any issued patents or published patent applications or indicate that the claim is based on unpublished patent applications.” “The requirement for an IPR disclosure is not satisfied by the submission of a blanket statement of possible IPR … . The requirement is also not satisfied by a blanket statement of willingness to license all potential IPR under fair and non-discriminatory terms ….” “However, the requirement for an IPR disclosure is satisfied by a blanket statement of the IPR discloser's willingness to license all of its potential IPR meeting the requirements …on a royalty-free basis.”[16] And if a disclosure was made on the basis of patent application , the IETF Executive Director may request a new disclosure to updates the information. [17]
It appears that ITU-T is making effort to improve Patent Declaration quality. The Proposed Rearrangement of the Last Page of the Current Patent Declaration Forms includes the following entries: status, country, patent number (if patent granted) or Publication number (if patent pending), title.
3. Clarification of RAND
International standard shall be efficient. Cost effective standards will facilitate production and competition. Given the ex post market power of patent holders who have patent claims against the Recommendations and the said
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