Patented technology in IEEE standards

This guide offers information concerning IEEE Standards and its patent policies. This guide does not state IEEE Standards policy. Definitive statements of IEEE Standards' policies and procedures concerning patents can be found in the IEEE-SA Standards Board Bylaws and the IEEE-SA Standards Board Operations Manual.

A complete package of patent-related materials is available. This package includes all the documentation you need to comply with the IEEE Standards policy concerning essential patents. A flowchart with additional guidance on the methodologies used by the IEEE-SA Standards Board Patent Committee is part of this package. If you include patented technology in your standard, then you may have incorporated an essential patent.

What is an essential patent?

Essential patents are those patents whose infringement is, or in the case of patent applications, potential future infringement the applicant asserts will be, unavoidable in a compliant implementation of either mandatory or optional portions of a standard. The oversight of the IEEE process is only concerned with essential patents.

Call for essential patents by the Working Group Chair

What exactly is a call for essential patents?

It's a reminder, made by the chair of an IEEE standards-developing working group or the chair of an IEEE Standards Sponsor. The chair informs the members of the working group that if any individual believes that a patent or patent application might be essential to the implementation of the standard, that fact should be made known to the entire working group.

This request shall be made at every standards-development meeting, usually as part of the chair's introductory remarks. Anyone can respond to this call, be they observers or members of the group. There is no obligation to search patent portfolios and no patent numbers are required to be identified as part of the call for patents--just information that something may be of issue. Once the chair is made aware of this, he or she can send out a patent letter of assurance request to the potential patent holder for official confirmation of information.

So what can you discuss about patents at a standards-development meeting?

You can cover the content of the patent letter of assurance form, you can discuss the technical merits of using the technology under patent, and you can discuss the way patent information is made available from the IEEE. You must not discuss subjects like the pricing for use of a patent, how a patent should be licensed, validity or interpretation of a patent claim, or any terms or conditions of use. These are not appropriate topics for discussion in a standards developing committee. Further information can be found in "What You Need to Know About IEEE Standards and the Law."

Questions from industry or from individuals can be directed to the IEEE-SA Standards Board Patent Committee for further consideration.

Letters of Assurance

How do you ask for a letter of assurance?

The patent letter of assurance request is a formal request from IEEE standards developers to potential patent holders both for information concerning their patent and whether the patent holder will be willing to license that patent for use on reasonable and nondiscriminatory terms. The patent letter of assurance request template can be found here. Using this template will reduce the time it takes to review your letter of assurance.

There are three general responses that you can expect to a patent letter of assurance request:

--That someone has essential patents and that they'll license them
--That someone has essential patents and won't license them
--That someone isn't aware of any essential patents

Of course, there may also be no response.

All responses to these requests are to be sent to the IEEE-SA Standards Board Patent Committee (with a copy to the working group chair) for further processing. These responses are known as "letters of assurance."

Why should you request a patent letter of assurance?

Receiving a patent letter of assurance benefits both the working group developing the draft standard and the essential patent holder. You should remember that receiving a letter of assurance does not ensure that any particular patent is an essential patent.

The patent letter of assurance indicates the patent holder's position regarding licensing of essential patent rights. This position may be

· Willing to grant either a royalty-free license or a license based upon reasonable terms and conditions
· Unwilling to grant either a royalty-free license or a license under reasonable terms and conditions
· Lack of awareness regarding essential patent rights supporting the draft standard

The response from the patent holder serves as further guidance as to whether or not to proceed with the inclusion of the referenced patented technology in the draft standard. You should address any concerns with the response to the IEEE-SA Standards Board Patent Committee.

Steps in the standards development process that involve patents

· When you start to develop your standard, the Project Authorization Request, or PAR, asks if you have reviewed the IEEE patent policy with your working group.

If your working group chooses to include possible patented technology in its draft standard, early disclosure of such patents is critical to avoid problems later on in the development process. Early disclosure notifies you and the IEEE of the patent in the most timely manner and gives you and potential patent holders the greatest opportunity to evaluate the benefits that the patented technology may offer your draft standard. However, you should not take any action that could be interpreted as requiring any participant in the development process to undertake a patent search of either its own portfolio or of any other organization. The objective is to obtain early disclosure concerning the existence of patents, where known or suspected.

Letters of assurance are to be sent directly to the IEEE-SA Standards Board Patent Committee. If you receive patent letters of assurance during the development of your draft standard, you should copy them and forward the originals to the IEEE-SA Standards Board Patent Committee. Upon satisfactory review, the patent letters of assurance will be included in the IEEE-SA patent database.

· During the development of your draft standard, issues may arise regarding patent policy. It may be appropriate to refer some of these issues to the IEEE-SA Standards Board Patent Committee. For example:

a) A patent letter of assurance request is sent to a patent holder and no response is received. However, the working group has good reason to believe that the patent holder has essential patents.
b) Patent holder has essential patents and does not agree to license.
c) Potential patent holder does not know if it has essential patents and does not agree to license if it does have them.
d) Claimant asserts essential patents without specifics and is unwilling to license.
e) Claimant returns the patent letter of assurance, but has modified it from the template format.
f) A specific request is made of the IEEE-SA Standards Board Patent Committee.

· All published IEEE Standards include the following disclaimer at the beginning of the standard:

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

Additionally, when a patent letter of assurance is received from a known patent holder prior to publication of that standard, the following language is also included within the standard:

"A patent holder or patent applicant 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 applicants desiring to obtain such licenses. The IEEE makes no representation as to the reasonableness of rates, terms, and conditions of the license agreements offered by patent holders or patent applicants. Further information may be obtained from the IEEE Standards Department."

· If the inclusion of patented technology becomes known after the initial approval of the standard, you should request a patent letter of assurance from the potential patent holder. If you receive patent letters of assurance subsequent to the standard's approval, you should copy them and forward the originals to the IEEE-SA Standards Board Patent Committee.

· Letters of assurance apply from the date of your standard's approval to the date of your standard's withdrawal, and they are irrevocable upon acceptance by the IEEE-SA Standards Board Patent Committee.

For further information or for any questions concerning IEEE Standards patent policy, please contact the IEEE-SA Standards Board Patent Committee through its Staff Administrator:

IEEE-SA Standards Board PatCom Administrator
IEEE Standards Department
445 Hoes Lane
Piscataway, NJ 08854
USA

+1-732-562-3806
+1-732-875-0524 (fax)
d.ringle@ieee.org