European Commission Precedent to require ETSI to remove from
their IPR declarations database an IPR holder's claim of essential IPR for an
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
addresses this question explicitly in their Frequently Asked Questions
Question 4 Does ETSI make an evaluation of the patent declarations
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
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.
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
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.
January 6. 2003 letter to ETSI secretary General Karl Heinz Rosenbrock,
Jurgen Mensching DG Competition demanded that ETSI take further steps:
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
February, 2003 ETSI requested members' input on what if any further
action to take. Among the alternative choices were:
the SUN declaration in the database without the current additional
the SUN declaration in the database with the present warning )?
the SUN declaration in the database with the present warning and add a
link to the EC letter ?
the SUN declaration in the database?
some other action?
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
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.