Intellectual Property Policy
Approved by Board of Directors Meeting #9, July 16, 2002 and amended Board Meeting February 2004, Board Meeting #23 (December 2004), and Board Meeting 2011-2 (May 2011)
Summary: The IDEAlliance IP Policy seeks to protect those contributing to our efforts as well as those of the Association when it publishes its work. If you are contributing information to which you hold intellectual property claims such as a patent or copyright, please inform IDEAlliance so we can work with you to best determine how your contributions can be included within our published work.
In all matters of intellectual property rights and procedures, the intention of IDEAlliance is to benefit the public at large while respecting the legitimate rights of intellectual property owners. To promote the widest adoption of standards, IDEAlliance seeks to issue Final Specifications that may be implemented on either a Royalty-Free (RF) or RAND (reasonable and non-discriminatory) basis.
2.0 Application of Intellectual Property Policy
Only the affirmative act of joining a Working Group or otherwise agreeing to the terms of this Policy will obligate a Member to the commitments and obligations described in this Policy. The commitments and obligations described in this Policy shall apply to the extent a Draft or Final Specification is within the scope of the Charter of the Working Group. Within this Policy, unless specified otherwise, the term Member shall include the individual as well as the organization the individual represents.
In the course of its work, IDEAlliance receives Contributions, defined as ideas, inventions, intellectual property and/or documentation, submitted by a Member which are reasonably understood by the Member at the time of submission to have been submitted for purposes of incorporation into the Working Group’s Draft and/or Final Specification.
3.1 All Contributions
3.1.1 Member retains ownership of the intellectual property rights in its Contribution.
3.1.2 To the extent that a Contribution is or may be subject to copyright, Member grants a perpetual, non-exclusive, royalty-free, world-wide right and license to IDEAlliance under the Member's copyright rights in the Contribution to reproduce, publish, and distribute, display, perform, distribute and create derivative works of the Contribution solely for the purpose of (i) developing Draft or Final Specifications for which the Contribution was submitted, and (ii) to reproduce and display the Final Specification.
3.1.3 Member acknowledges that IDEAlliance has no duty to publish or otherwise use or disseminate any Contribution.
3.1.4 Member agrees that no information in the Contribution is confidential and that IDEAlliance and its other Members may freely disclose any information in the Contribution.
3.1.5 Member must, to the extent required by this Policy, make a disclosure of the existence of any proprietary or intellectual property rights of the Member in the Contribution at the time the Contribution is made or, if the proprietary or intellectual property rights are not known to the Member at the time of the Contribution is made, as soon as practicable after such rights are known to the Member.
3.1.6 Subject to Section 6.7, when making a Contribution, Member must make a disclosure if the Contribution (1) is likely to violate the intellectual property rights of any IDEAlliance Member or third party, or (2) is likely to subject the Final Specification to licensing obligations that are not consistent with the licensing obligations set forth in Section 5.0 as applicable to the Working Group to which the Contribution is made.
3.2 Intellectual Property
3.2.1 If IDEAlliance has knowledge from a Member or from of third party of any copyrights, trademarks, service marks, patents, patent applications, or other proprietary or intellectual property rights affecting a Draft or Final Specification, IDEAlliance shall make note of the existence of such rights in the public disclosure area of the Draft or Final Specification.
3.2.2 IDEAlliance disclaims any duty to identify the existence or to evaluate the applicability of any claimed copyrights, trademarks, service marks, patents, patent applications, or other proprietary or intellectual property rights, and takes no position on the validity or scope of any such rights. IDEAlliance will not make any claims or determinations as to whether any intellectual property is essential to the implementation of any IDEAlliance Specification and disclaims any obligation to do so.
4.0 Licensing Requirements
4.1 Licensing Goals
IDEAlliance seeks to issue Final Specifications that can be implemented on a RF or RAND basis. To this end, each Working Group Charter will include a reference to which basis, RF or RAND, the Final Specification shall be subject to.
4.2 Licensing Obligations
As a condition of participating in a Working Group, each Member shall agree to make available under RF or RAND licensing terms depending upon the Working Group Charter, any Essential Claims as defined in Section 9.0. This requirement includes Essential Claims that the Member owns and any that the Member has the right to license without obligation of payment or other consideration to an unrelated third party. With the exception of the provisions of Section 5.3, the applicable RF or RAND licensing obligations are binding on Member for the life of the patent containing the Essential Claims, regardless of changes in Working Group participation status or IDEAlliance Membership.
4.3 Exclusion From Licensing Requirements
Under the following conditions and under the procedure of Section 7.0, a Member may request exclusion of specifically identified and disclosed Essential Claims from the applicable RF or RAND licensing requirements as set forth in the Working Group Charter.
4.3.1 Exclusion With Continued Participation
Exclusion of Essential Claims from the applicable RF or RAND licensing requirements may be sought by a Member who seeks to remain in the Working Group only if that Member indicates its refusal to appropriately license specific Essential Claims before the first publication of a Draft Specification by specifically requesting such exclusion from the Chair of the Working Group. A Member who requests exclusion of Essential Claims may continue to participate in the Working Group.
If any claims are made essential in a Draft Specification as a result of subject matter not present or apparent in the first published Draft Specification, a Member may request exclusion of these New Essential Claims, and only these claims, by using this exclusion procedure above before any subsequent publication of the Draft Specification.
4.3.2 Exclusion and Resignation From Working Group
A Member may resign from a Working Group after the first publication of a Draft Specification and be excused from all licensing commitments arising out of Working Group participation which may arise after the date of resignation.
4.3.3 Joining an Already Established Working Group
A Member who joins a Working Group after the first publication of a Draft Specification must request exclusion of any Essential Claims no later than 45 days after the first publication of the Draft Specification.
4.3.4 Exclusion Procedures for Pending, Unpublished Patent Applications
Exclusion of Essential Claims in pending, unpublished patent applications follows the procedures for exclusion of issued claims and claims in published applications. Any exclusion of an Essential Claim in an unpublished application must provide either: (1) the text of the filed application; or (2) identification of the specific part(s) of the Draft or Final Specification whose implementation makes the excluded claim essential.
4.4 RF Licensing Terms
A RF license to make, have made, use, sell, have sold, offer to sell, import, distribute, and dispose of implementations of the Final Specification:
- Shall be available to all, worldwide, whether or not they are IDEAlliance Members;
- Shall extend to all Essential Claims;
- May not be conditioned on payment of royalties, fees or other consideration;
- Shall be made available as long as the Final Specification is in effect; and
- Shall have a term for the life of the patent in question.
5.1 Disclosure Requirements
5.1.1 Disclosure is required of a Member participating in a Working Group when either of the following are true: (1) the individual Member representative participating in a Working Group receives a Separate Disclosure Request from IDEAlliance or the Chair of the Working Group which is related to a Draft Specification being developed by that particular Working Group; or (2) that individual Member representative has actual knowledge of an issued patent or published patent application which the Member believes contains Essential Claims with respect to the Draft Specification containing a Disclosure Request.
5.1.2 Where Disclosure is required, the Member will do so in a Disclosure Statement as set forth in
5.2 Disclosure Requests
Disclosure Requests will be automatically included in each Draft Specification as it reaches each new maturity level. Separate Disclosure Requests may be issued by IDEAlliance or the Working Group Chair to any Member suspected of having knowledge of Essential Claims.
5.3 Disclosure Statements
5.3.1 Disclosure Statements must include: (1) patent number, but need not mention specific claims, (2) Working Group, and (3) the Draft or Final Specification to which it applies.
5.3.2 In the case of published patent applications, the Member's disclosure obligation in a Disclosure Statement extends to amended and/or added claims that have been allowed by the relevant legal authorities and that the Member believes to be Essential Claims. To satisfy the disclosure obligation for such claims, the Member shall either (1) disclose such claims in the Disclosure Statement or (2) identify in the Disclosure Statement those portions of the Draft or Final Specification likely to be covered by such claims.
5.4.3 Disclosure Statements should be sent to the Chair of the Working Group.
5.4 Disclosure of Pending, Unpublished Applications
If a Member includes claims in a patent application and such claims were developed based on information from a Working Group or IDEAlliance document, the Member must disclose the existence of such pending unpublished applications as the Member believes may have Essential Claims.
5.5 Good Faith Disclosure Standards
All Disclosures required by this Policy are limited to the personal knowledge of the individual Member representative who submits a Contribution as set forth in Section 2.0 or who submits a Disclosure Statement pursuant to Section 6.4. Nothing in this Policy requires a Member or IDEAlliance to conduct a patent search.
5.6 Timing of Disclosure Obligations
The Disclosure obligation of this Policy is an ongoing obligation until a Final Specification is issued. For example, full satisfaction of the Disclosure obligation may not be possible until later in the Draft Specification process when the design of the Specification is more complete.
5.7 Termination of Disclosure Obligations
The Disclosure obligation terminates when the Final Specification is published or when the Working Group terminates.
5.8 Disclosure Obligations of Third Parties
Invited experts or members of the public participating in a Working Group must comply with the same Disclosure obligations of Members and to the extent of their own personal knowledge.
5.9 Disclosures to Be Publicly Available on Specification Track
Disclosures for each Draft and Final Specification will be made public.
6.0 Exclusion Handling
If a request for exclusion has been made or if a patent or patent application containing Essential Claims has been disclosed in a Disclosure Statement, but is not available on the applicable RF or RAND licensing terms per the Working Group Charter, this matter shall be brought to the attention of the President of IDEAlliance. The President, working in cooperation with the Working Group, will advise the Working Group whether to: (a) disband the Working Group; (b) direct the Working Group to exclude this area from the standardization effort so that the Final Specification remains implementable; (c) make the implementation of the relevant portion of the Final Specification optional so that the non-optional part of the Final Specification remains implementable; or (d) suggest alternate licensing terms as proposed below.
6.2 Alternate Licensing Terms
After having made every effort to resolve the conflict, the President of IDEAlliance, working with the Chair and Members of the Working Group may make a Proposal that specifically disclosed technology be included in the Final Specification even though such claims are not available according to the applicable RF or RAND licensing requirements of this Policy. The Proposal must explain: (1) why the chartered goals of the Working Group cannot be met without inclusion of the disclosed technology; (2) how the proposed licensing terms will be consistent with widespread adoption.
The Proposal must include: (1) a complete list of claims and licensing terms of the proposed alternative arrangements; and, (2) a proposed new Charter for the Working Group, unless the Final Specification has been issued and no new work is required.
If the President determines that the Proposal is the best alternative consistent with the IDEAlliance mission then the Proposal shall be circulated for public comment and Working Group review. The Working Group will then need to recharter under these new terms. Members of the Working Group who are bound to RF or RAND terms are not released from their obligations by virtue of the Proposal alone. As with any newly chartered Working Group, new commitments must be made, along with possible exclusions. In order to expedite the process, the Proposal should consider whether additional claims would be excluded under the new charter and include such information in the Proposal.
7.0 Definition of Essential Claims
7.1 Essential Claims
Essential Claims shall mean all claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by implementation of a Final Specification. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing the Final Specification. Existence of a non-infringing alternative shall be judged based on the state of the art at the time any Draft Specification becomes a Final Specification.
7.2 Limitations on the Scope of Definition of Essential Claims
The following are expressly excluded from and shall not be deemed to constitute Essential Claims:
7.2.1 Any claims other than as set forth above even if contained in the same patent as Essential Claims.
7.2.2 Claims which would be infringed only by:
- portions of an implementation that are not fully set forth in detail in the Draft or Final Specification and not merely referenced in the Draft or Final Specification,
- enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Final Specification and are not themselves expressly set forth in the Final Specification, or
- the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Final Specification.
7.2.3 Design patents and design registrations.
IDEAlliance Intellectual Property Policy, 2011-19