ETSI Headquarters, Sophia Antipolis, France - 27 June 2013
The ETSI IPR Special Committee (IPR SC) met at the ETSI headquarters in Sophia Antipolis, France from 18-20 June 2013, during which the topics of transfer of patent ownership, injunctive relief, reciprocity, and dispute about whether licensing terms and conditions are Fair Reasonable and Non-Discriminatory (FRAND) were discussed.
The meeting was again attended by a large number of ETSI members, ETSI's partners the International Telecommunication Union (ITU) and the Institute of Electrical and Electronics Engineers Standards Association (IEEE-SA), as well as representatives of the European Commission's Directorates General dealing with competition, enterprise and market matters.
In order to have the most complete view and assessment of the issues related to patents in the context of standardization, the chairman of the IPR SC may invite key experts to participate in discussions. At a previous meeting delegates heard from the Rt Hon. Professor Sir Robin Jacob, the Sir Hugh Laddie Chair of Intellectual Property Law at University College London and retired Lord Justice of Appeal. At this month's meeting the chairman invited Prof. Dr. Peter Meier-Beck, the presiding judge of the X. senate of the German federal supreme court. Dr. Meier-Beck gave a keynote presentation about the German Orange Book Standard case, in which the German Federal Court of Justice held that a patent holder's refusal to enter into a license agreement on FRAND terms can prevent an injunction from being granted against a prospective licensee. This was followed by a very lively and beneficial discussion. This session provided a number of new insights to participants.
The meeting focused on proposals to address the circumstances under which injunctive relief may be available. Discussions also continued on the meaning of the reciprocity condition attached to a patent holder's commitment to license its Standard-Essential Patents. No consensus has yet been reached on these topics and the debate is expected to continue at the next meeting in September.
The ETSI Secretariat gave an update on collaboration with the World Intellectual Property Organization (WIPO) to explore the possibility of defining suitable Alternative Disputes Resolution services that may be useful in resolving FRAND disputes.
The ETSI General Assembly of March 2013 had previously adopted a change to the ETSI IPR Policy to better address the situation when a Standard-Essential Patent subject to a FRAND licensing commitment is transferred to a new owner, to ensure that all successors-in-interest continue to be bound by this FRAND licensing commitment. The IPR Special Committee agreed on accompanying changes in the ETSI Guide on Intellectual Property Rights. These changes will be presented for approval to the ETSI Board meeting in September before being published.
The next meetings of the ETSI IPR SC are scheduled for 9-11 September and 10-12 December 2013.