stds-802-16: Important Information on IEEE-SA Patent Policy and Procedures
Dear 802.16 Participants:
Enclosed below is a note from 802 Chair Paul Nikolich concerning the IEEE-SA Patent Policy. The information he cites is included on the IEEE 802.16 Patent Information page <http://ieee802.org/16/ipr/patents>, along with further details. I urge you to make sure you are familiar with this information.
IEEE 802.16 maintains a Patent Policy and Procedures statement <http://ieee802.org/16/ipr/patents/policy.html> that specifies its implementation of the IEEE-SA procedures. Due to some small changes in wording of the IEEE-SA policies and procedures, I have updated this IEEE 802.16 Patent Policy and Procedures statement.
In accordance with the procedures, I maintain the "Index of Patent Notices On File with IEEE 802.16 <http://ieee802.org/16/ipr/patents/notices>. Please review this page periodically to become familiar with the notices and their status.
In accordance with the revised IEEE 802.16 Patent Policy and Procedures statement, I have revised the 802.16 Document Submission Templates. You will find links to the new versions at <http://ieee802.org/16/submit.html>. I'll send out a separate email announcing the new templates.
Regards,
Roger
Dr. Roger B. Marks <mailto:marks@nist.gov>
Chair, IEEE 802.16 WG on Broadband Wireless Access <http://WirelessMAN.org>
National Institute of Standards and Technology/Boulder, CO, USA
tel: +1 303 497 3037 fax: +1 509 756 2642
>Dear SEC,
>In order to ensure their is a clear and uniform understanding the IEEE Standards Association patent policy and procedures I would like all WG and TAG chairs to ensure this policy is well know to their members. The policy and procedures are defined below and are taken from the IEEE-SA Standards Board Bylaws and the IEEE-SA Standards Board Operations Manual. Please send a copy of this email to your working group members and be prepared to answer any questions that may arise concerning the policy. If you need assistance in answering questions, I will be happy to assist or enlist the assistance of the IEEE-SA as necessary. Regards,
>--Paul Nikolich, IEEE 802 Chair
>
>- The Patent Policy is set forth in Section 6 of the IEEE-SA Standards Board Bylaws <http://standards.ieee.org/guides/bylaws/sect6-7.html>.
>- Operational procedures relating to the Patent Policy are found in Section 6.3 of the IEEE-SA Standards Board Operations Manual <http://standards.ieee.org/guides/opman/sect6.html>.
>
>Section 6 of the IEEE-SA Standards Board Bylaws
>6. Patents
>IEEE standards </guides/opman/sect1.html> may include the known use of patent(s), including patent applications, provided the IEEE receives assurance from the patent holder or applicant with respect to patents essential for compliance with both mandatory and optional portions of the standard. 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
>b) A statement that a license will be made available without compensation or under reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair discrimination This assurance shall apply, at a minimum, from the date of the standard's approval to the date of the standard's withdrawal and is irrevocable during that period.
>_____________________________________________________________________
>Section 6.3 of the IEEE-SA Standards Board Operations Manual
>6.3 Patents
>The patent policy is set forth in clause 6 </guides/bylaws/sect6-7.html> of the IEEE-SA Standards Board Bylaws.
>Patent holders shall submit letters of assurance to the IEEE Standards Department (to the attention of the Patents Administrator <mailto:d.ringle@ieee.org>) before the time of IEEE-SA Standards Board review for approval.
>In the event that a patent may apply to a standard and a letter of assurance cannot be obtained, the working group shall refer this matter to the Patents Administrator <mailto:d.ringle@ieee.org> in the IEEE Standards Department. 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 (Patents Administrator <mailto:d.ringle@ieee.org>) 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. The IEEE will provide contact information about the patent holder upon request.
>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 Withdrawn standards
>All IEEE standards are subject to periodic review for reaffirmation, revision, or withdrawal every five years. Thus, any standard that incorporates patented technology may at some point in time be withdrawn. Clause 6 <http://standards.ieee.org/guides/bylaws/sect6-7.html> of the IEEE-SA Standards Board Bylaws contains policies concerning the period of validity for any assurance received from a party claiming a patent, issued or under application.
>6.3.4 Disclaimer
>The IEEE is not responsible for identifying patents 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.