Global Standardization Activities

Recent Activities of ITU-T IPR Ad-hocMeeting
Hajime Yamada and Isamu Yoshimatsu†
Abstract
ITU-T frequently holds ad-hoc meetings to handle intellectual property rights such as essential patents
included in a Recommendation. The definition of “reciprocity” was revised and it was made clear that
“free” means royalty-free in the new form revised in July 2004, in which licensing terms for essential
patents for a Recommendation should be presented. ITU is now being requested to take on a new role
regarding the treatment of essential patents. This article describes some recently revised forms and recentactivities of these meetings.

1. Introduction
Within ITU-T *1, the TSB *2 Director’s Ad HocGroup on IPR [1] holds frequent ad hoc meetings todraft and enact rules and forms for processing intellectual property rights (IPR) such as patents included
in ITU-T Recommendations. This article describes
some recently revised forms and recent activities ofthese meetings.
2. Revised Patent Declaration FormITU receives Patent Declaration Forms from patent
holders with respect to technologies that are essential
for implementing ITU Recommendations. In thisdeclaration form, the patent holder should present hisor her license policy by selecting one of the following
three options:
Option 1: Royalty-free licensing regarding theessential patents for the Recommendations.
Option 2: Licensing of the essential patent of theRecommendations under reasonablenon-discriminatory conditions.
Option 3: No guarantee for licensing the essential
patent of the Recommendations.

† NTT Intellectual Property Center
Musashino-shi, 180-8585 Japan
E-mail: yoshimatsu.isamu@lab.ntt.co.jp

62The Patent Declaration Form was revised last Julyin such a way that the holder of essential patent A
who had already declared Option 1 regarding an ITU
Recommendation may withdraw Option 1 withrespect to the holder of essential patent B if patent B’sholder has not declared Option 1 regarding the same
ITU Recommendation. After the box for Option 1 has
been checked, a check mark is also placed in the box
located at the beginning of the declaration sentence
newly set after selecting Option 1. A similar revision
was made in the General Patent Declaration Formregarding the joint recommendations of JTC-1 (JointTechnical Committee 1), which is a joint organizationof the ISO (International Standardization Organization) and the IEC (International ElectrotechnicalCommission), as well as in the General Patent Declaration Form that does not specify any particularessential patent.
2.1 Definition of “reciprocity”
Prior to the above-mentioned revisions, according
to IPR guidelines describing administrative procedures governing intellectual property rights arisingfrom the ITU Recommendations, reciprocity meantlicensing essential patents in a non-discriminatoryfashion to holders of essential patents who had*1 ITU-T: International Telecommunication Union Telecommunications Standardization Sector*2 TSB: Telecommunication Standardization Bureau, http://www.
itu.int/ITU-T/info/tsb/info.html

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Global Standardization Activities

declared Option 1 or 2. The reasoning behind theabove change was that since there was no obligation
to license a holder who had declared Option 3, holders of essential patents would be prevented fromselecting Option 3. However, this revision, althoughcomplying with reciprocity, could no longer maintainthe concept of “non-discriminatory” in the strict
sense of the term, because there would be two kindsof licensees, namely, those that have to be licensed
royalty-free and those that do not have to be licensed
royalty-free, depending upon the declaration policy
selected by other holders of essential patents. As aresult, the expression “non-discriminatory” wasdeleted from the definition of reciprocity. In future,when a patent declaration form is submitted, attention
must be paid to which option has been selected in thepatent declaration forms submitted by other holdersof essential patents.
2.2 Definition of “free”
Discussions have continued for a long time about
whether “free” should mean waiving any rights by apatent holder or simply mean making the license royalty-free with regard to compensation for implementing the patent. At the meeting, it was concluded thatthe definition of “free” should not mean waiving allrights pursuant to the patent, but should mean royalty-free and that the patent holder should be able todetermine other conditions such as licensed products
or licensing periods.
3. Issues relating to complex patents
Recent rapid technical innovation has led to greater
complexity and diversification in the technical content of ITU Recommendations. In this situation, thenumber of essential patents included in the ITU Recommendations has been increasing. Therefore, it is
becoming difficult to diffuse the ITU Recommendations as long as the ITU maintains its stance that itshould not be involved in patent issues at all.
For example, the Recommendations for the thirdgeneration mobile phone system were almost complete in 1998, but their diffusion did not begin until
2003. The reason for this delay was that implementers spent a great deal of time in separate negotiations with many holders of essential patents and hesitated to implement the Recommendations because
paying royalties to each holder would have resulted
in enormous fees.
NTT twice submitted proposals at past meetings
indicating that the ITU must act since the ITU’s misVol. 3 No. 8 Aug. 2005

sion is to establish telecommunication technical standards as ITU Recommendations and to diffuse themaround the world. At the meeting in July 2004, whenNTT submitted a proposal indicating these problems,
the IMTC (International Multimedia Telecommunications Consortium) also submitted a proposal
requesting that ITU take action in complicated situations where many holders have many essential
patents concerning a certain Recommendation. Someparticipants in the meeting mistakenly thought thatthe proposals would request ITU to promote one-stop
licensing activities to implementers of the Recommendations. All those present recognized the problem, but it was difficult to discuss it in a more specific fashion. Finally, it was agreed that this issue shouldbe discussed at the following meeting. At that meeting, held in March 2005, where all the participantsalready recognized the issue, NTT submitted the following proposal, suggesting more specific solutions.
According to the proposal, an IPR expert groupwould be formed when necessary as a new ITU function before a Recommendation is concluded. Thegroup might be made up of engineers and IPR
experts. The expert group would gather and organize
various kinds of patent information provided bymembers and then provide it to the group in charge ofmaking a Recommendation. The expert group would
also have the role of requesting holders of essential
patents to submit patent declaration forms. After ITU
approves a Recommendation, the IPR expert groupwould monitor how it is diffused. Specifically, theIPR expert group would inform members of the terms
and conditions for licensing essential patents if they
are published or inform holders of essential patents ofthe comprehensive terms and conditions requested byimplementers of the Recommendations.
Siemens (Germany) and France Telecom (France)
indicated their agreement with NTT’s proposal, commenting that it is valuable, but some of the othermembers pointed out that such a new function would
exceed the ITU’s current functions. In particular,
Lucent (US) and Microsoft (US) pointed out that,
under U.S anti-trust legislation, obliging members totake part in the IPR expert group would be a problem.
NTT explained that holders of essential patents
would have to decide by themselves whether to join
the IPR expert group and that this proposal would notnecessarily mean only forming a patent pool. The discussions became more complex because of the complexity of the issue. It was agreed that the details ofthe discussions should be recorded in the proceedings
in order to avoid having to restart future discussions
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Global Standardization Activities

from the beginning.

Hajime Yamada

4. Trademark guidelines
A draft of the trademark guidelines was scheduled
to be published on the ITU Web pages including thefollowing request which was made in July 2004 by
the IPR committee of TTC (Telecommunication
Technology Committee, Japan).
1) It should take into consideration differences
between countries in trademark legislation.
2) It should explain the “descriptive use” of trademarks.
5. Copyright guidelines
The content of the proposal concerning copyrightguidelines was scheduled to be published on the ITU
Web pages with a slight modification in layout tomake it easier to understand the policy that the use ofprograms protected by copyright law should beavoided in a Recommendation. This slight modification was requested at the July 2004 meeting by theIPR committee of TTC.

Dean, Graduate School of Economics, Toyo
University.
He received the Ph.D. degree in engineeringfrom Keio University in 1985 and the M.S.
degree in management of technology from Massachusetts Institute of Technology in 1990. He iscurrently a professor in the Faculty of Economics
at Toyo University and also serving as the Deanof its Graduate School of Economics. His
research focuses on economics of info-communications media, ICT accessibility, technology
management, and spectrum policy. He is serving
as the project editor of the new ISO 9241-20
guidelines: “Ergonomics of human system interaction—Accessibility guidelines for information
communication equipment and services—General guidelines.” He is an Affiliated Fellow of theNational Institute of Science and Technology inthe Ministry of Education, Culture, Sports, Science and Technology. He is a member of theEngineering Academy of Japan and also vicechair of the IEEE Engineering Management
Society Japan Chapter.

Isamu Yoshimatsu
Senior Manager, Licensing Group, NTT Intellectual Property Center.
He received the B.E. and M.E. degrees inadvanced organic chemistry from Kyushu University, Fukuoka in 1984 and 1986, respectively.
In 1986, he joined NTT Electrical Communication Laboratories, Tokyo. He studied lithium
rechargeable batteries from 1986 to 1993. In1993, he moved to Licensing Group of the Intellectual Property Center. He has been a memberof the Intellectual Property Rights Committee in
TTC since 2002.

6. Future developments
Discussions are now under way concerning theissue of complex patents including the issue of many
essential patent holders. We intend to pay special
attention to these discussions and report progress inthe NTT Technical Review.
Reference[1]64

http://www.itu.int/ITU-T/othergroups/ipr-adhoc/index.html

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