[PP-DIALOG] Applicability of LOAs to Amendments -- Question 4 of the major questions

[Sandy Block <msb@xxxxxxxxxx>]

There is a bit of confusion I think.
 As I understand it, PatCom
is addressing four MAJOR questions -- and question 4 itself (on LOAS and
amendments to standards) has four subquestions that were previously asked
in May. So I will refer to the Q4 subquestions as Q(i) through Q(iv), and
address them below.  Comments on Q1 through Q3 will be sent separately
 

As a general matter relating to Q4 (with
response due today on June17th), I offer the following general thoughts.
  

An LOA would seem subject to the
referenced spec in place at the time it is submitted, unless it states
otherwise. Unless provided otherwise, an LOA does not apply to amendments
in which the submitter did not participate, although IEEE may consider
an exception for technical matter (EPC inventions) that are subject to
a licensing assurance and which remain intact in the amended/revised spec
and are unaffected by the amendment. Under this view, an  LOA does
not disappear merely because additional subject matter is added-on through
an amendment or revision. This view balances the SEP holder interest in
not having its SEP applied to new, unexpected spec portions (of which it
may be unaware) while the implementer does not lose assured access to content
that is substantially unchanged. 

My specific comments on Q(i) through
Q(iv), relating LOAs and amendments, follows:  


Q(i).
“Does a blanket LoA citing a standard provide assurance for subsequent
amendments or revisions of the standard?”

A(i)        Yes.  A Blanket LOA that references a specific standard (e.g., IEEE Std 802.3) without further qualification provides assurance for all current and future amendments, revisions, editions of the same standard.”  (See FAQs 14 and 17)

A NUMBER OF THOUGHTS TO CONSIDER. WHAT IF THE STANDARDS SPEC VEERS OFF IN A NEW DIRECTION OR WITH A DIFFERENT SCOPE AND THE SUBMITTER IS NO LONGER PARTICIPATING IN THE STANDARD EFFORT? ARE THERE RULES ON HOW STANDARDS ARE NUMBERED OR IDENTIFIED AS THE SAME STANDARD? EX POST APPLICATION OF OBLIGATION NEEDS TO BE CONSIDERED.

Q(ii). “Does a Letter of Assurance citing specific patents that cites a standard provide an assurance for subsequent amendments or revisions of the standard?”

A(ii).      Yes.  An LOA that references a specific standard (e.g., IEEE Std 802.3) without further qualification provides, as to the identified patents, assurance for all current and future amendments, revisions, editions of the same standard. (See FAQ 14)

SEE Q(i).

Q(iii). “Does a blanket LoA that cites a specific amendment to a standard continue to apply once the amendment has been rolled into the standard (i.e. in a subsequent revision or edition), and the cited amendment becomes obsolete.

·        If so, is it still a “blanket” LoA that covers the entire subsequent revision?”

A(iii).      Yes.  A blanket LOA that references a specific amendment of a standard (e.g., IEEE Std. 802.3nnn) provides assurance for any of the Submitter’s potential Essential Patent Claims that become Essential Patent Claims as a result of the amendment, and it continues to provide such assurance when the amendment has been rolled into the standard, but only if the application of the technology required by the amendment has not changed from its previous usage.  (see SASB Ops Man 6.3.5) (See also FAQs 14 and 17)

ALTHOUGH THE QUESTION(S) ARE NOT CLEAR, I APPRECIATE THAT EPCS IN AN AMENDMENT REMAIN EPCS IF THAT AMENDMENT IS INCORPORATED INTO A LARGER TEXT, WHERE THE TECHNOLOGY USE IS SUBSTANTIALLY UNCHANGED.  THIS IS IN LINE WITH MY GENERAL THOUGHTS THAT RELATE TO AMENDMENTS.

Q(iv). “Does a Letter of Assurance that cites specific patents and cites a specific amendment to a standard continue to apply once the amendment has been rolled into the standard (i.e. in a subsequent revision or edition), and the cited amendment becomes obsolete?”

A(iv).     Yes.  An LOA that references a specific amendment of a standard (e.g., IEEE Std. 802.3nnn) provides assurance for the Patent Claims identified in the LOA that become Essential Patent Claims as a result of the amendment, and it continues to provide such assurance when the amendment has been rolled into the standard, but only if the application of the technology required by the amendment has not changed from its previous usage.  (see SASB Ops Man 6.3.5) (See also FAQ 14)

SEE Q(iii)

Marc Sandy Block,
Counsel, Intellectual Property Law
1B117 /  North Castle Drive /  Armonk, NY  10504
msb@xxxxxxxxxx
TL 251-4295  (outside 914-765-4295); fax 251-4290

From:        Don Wright <don@xxxxxxxxxxxxxxxxxxxxxxxx>
To:        PP-DIALOG@xxxxxxxxxxxxxxxxx
Date:        06/01/2016 03:32 PM
Subject:        [PP-DIALOG] Applicability of LOAs

---

Dear PP-Dialog participants:
 
There have been a number of discussions
among IEEE standards participants concerning the applicability of LOAs. 
These discussions have focused on at least the following four areas:

1.        How should LOAs (blankets and others) be understood in situations involving changes in ownership, control, etc. especially considering updates to the Patent Policy text?

2.       Which form of LOA is required for PARs (projects) that were already in existence when the Patent Policy text was updated on 15 March2015?

3.       Which form of LOA is required for PARs (projects) that were started on or after 15 March 2015?

4.       How are LOAs for an amendment versus a standard interpreted?
 
PatCom has been discussing topic #1 but, at this time, has no text or other guidance to propose to further address this topic.  In this context, PatCom has reviewed not only the updated Patent Policy text but also the text in clause 6.3 of the IEEE-SA Standards Board Operations Manual (see https://standards.ieee.org/develop/policies/opman/sect6.html).
 
In regards to topics #2 and #3, PatCom notes that the text of FAQs #84 and #85 describe the effective date of the Patent Policy.  The methodology described in those FAQs is substantively consistent with the way the transition was handled with the 2007 Patent Policy update.  At this time, PatCom is proposing no changes to those FAQs or any additional FAQs on this topic.
 
Topic #4 was addressed in a separate e-mail to PP-Dialog distributed by me on 20 May 2016.
 
PatCom welcomes comments, ideas, and proposals from the PP-Dialog participants and others on these topics and looks forward to a discussion at the PatCom meeting on 29 June 2016 in Berlin Germany.  Please submit your comments, ideas, and proposals to PP-Dialog by 20 June 2016 so they may be reviewed by PatCom members and others in advance of the Berlin meeting.
 
________________________________________________________

Don Wright, President Standards Strategies, LLC 10420 Vista Hills Blvd Louisville, KY  40291 don@xxxxxxxxxxxxxxxxxxxxxxxx +1 859-396-7812

 


2016 IEEE Standards Association President-Elect
Member, IEEE SA Standards Board, PatCom (Chair) & ProCom
Chair, IEEE-ISTO Board of Directors                     
Chair, IEEE SA Nominations & Appointments Committee
Member, IEEE Nominations & Appointments Committee
Past Chair, IEEE Admission & Advancement Committee
Past Chair, INCITS Executive Board