European Commission Precedent to require ETSI  to remove from their IPR declarations database  an IPR holder's claim of essential IPR for an ETSI standard

What if any statements about IPR claims does a standards developing  organization publish on or in the applicable standard? Does the organization accept or deny liability or responsibility for any IPR claim?  Most organizations strive to distance themselves from taking any position other than disclosing the assertion and any associated licensing offer.

ANSI's statement is "By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and non-discriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer"  

ETSI's comparable statement is,  "Pursuant to the ETSI IPR Policy, no investigation, including IPR searches, has been carried out by ETSI. No guarantee can be given as to the existence of other IPRs not referenced in XXXYYYZZZ  (or the updates on the ETSI Web server) which are, or may be, or may become, essential to the present document"  ETSI further explicitly elaborates in its questions and answers:

ETSI addresses this question explicitly in their Frequently Asked Questions page

Question 4 Does ETSI make an evaluation of the patent declarations received?

Answer 4: The information that appears on the ETSI IPR database reflects the ETSI Members' declarations with regards to Intellectual Property Rights that they have considered essential for a particular ETSI STANDARD. Because these IPR declarations are made on Bona Fide Basis, ETSI is not in a position to assess the essential character of the patents declared.

Yet these seemingly clear disclaimers were  subject of much  attention in 2002 in Europe by a company contending that an IPR declaration made to an ETSI standard as "essential" and listed in the ETSI database is not really an essential IPR needed to meet the standard in the opinion of the company.

Mid 2002 The European Commission requested the ETSI secretary general to add the following comment on the IPR assertion by Sun Microsystems with respect to IPR related to GSM 03.19.  A visit to the relevant IPR database in July 2002 would have produced the statements shown below in italics followed by the SUN statement of January 2001. 

STATEMENT OF JULY 2002: Based on the character of information received, and in accordance with Article 7 of the ETSI IPR Policy, the Director-General ofthe ETSI Secretariat has to inform any standard users of the following:

The European Commission has carried out two independent research studies concerning the nature of SUN's IPR declarations regarding GSM 03.19 (TS 101 476). DG Competition has informed the ETSI Director-General that the results of these studies challenge the essential character of SUN's patents in the present IPR declaration.

STATEMENT OF JANUARY 2001: In accordance with the ETSI IPR Policy, Article 4.1, the SIGNATORY hereby informs ETSI that, with reference to ETSI Standard No. GSM 03.19, SUN hereby declares its belief that the above-mentioned patent might be considered ESSENTIAL in respect of the GSM 03.19 specification. SUN further declares that it has granted, and is prepared to continue to grant, licenses under its ESSENTIAL IPR, including the listed patents, on fair, reasonable and non-discriminatory terms and conditions. In making this latter declaration, SUN relies on their continuing belief, also stated in their prior declaration to ETSI with respect to GSM 03.19, that their standard license terms and conditions, as reflected in agreements they have previously entered into with SIM card manufacturers, satisfy this standard.

In  a January 6. 2003 letter to ETSI secretary General Karl Heinz Rosenbrock, Jurgen Mensching DG Competition demanded that ETSI take further steps:

We therefore Seek that ETSI ensure that in accordance with Article 6.2 of its IPR rules, Sun's essential IPR claim is removed from the ETSI IPR database and disassociated from the 03.19 standard. For the same reasons it is necessary to ensure that it is not obligatory to go through any proprietary Sun solution (inter alia a TCK test suite) in order to achieve or demonstrate full compliance with the standard

In February, 2003  ETSI requested members' input on what if any further action to take.  Among the alternative choices were:

Keep the SUN declaration in the database without the current additional information ?

Keep the SUN declaration in the database with the present warning )?

Keep the SUN declaration in the database with the present warning and add a link to the EC letter ?

Remove the SUN declaration in the database?

Take some other action?

A visit to the same ETSI  database location where the above text existed in July 2002 now  in May 2003  contains the following text below in italics  

The IPR declarations related to GSM 03.19 (TS 101 476) from Sun Microsystems Inc. have been removed from the ETSI IPR online database at the request of Directorate General Competition of the European Commission.

DG Competitionís argument for such a removal, based on evidence they have gathered, is that the presence of these IPR declarations in the IPR online database and SR 000 314 amounts to a measurable distortion of competition in the relevant market. ETSI recognises DG Competition as the competent body to assess distortion of competition in the EU market. Consequently, ETSI considers itself to be under an obligation to take this action in this exceptional case.

The removal of these declarations from the ETSI IPR online database and SR 000 314 must not be taken to imply any judgement by ETSI on the essentiality of the relevant IPR. DG Competition has confirmed that this removal is without prejudice to SUN Microsystems Inc.'s right to enforce their relevant patents.

NOTE: SUN Microsystems Inc. still maintains their declarations of 19 January 2001 with respect to GSM 03.19 (TS 101 476) and their willingness to comply with the ETSI IPR Policy.
These original licensing declarations are available on request from the ETSI Legal Advisor. It should be noted that Sun Microsystems Inc. in their letter of 26 February 2003 to ETSI expressed their continuing belief that they "own patents that might be infringed by every compliant implementation of GSM 03.19 (TS 101 476)".
The technical evidence as provided by DG Competition which challenges the essential nature of SUN Microsystems Inc.'s patents is also available on request from the ETSI Legal Advisor.



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