[PP-DIALOG] AW: [PP-DIALOG] Applicability of LOAs
Dear Don, PatCom members, PP-Dialog members,
Fraunhofer welcomes the opportunity to participate in this discussion.
In relation to the questions posed in the email of 1 June, we provide the following input:
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?
Fraunhofer concurs with Panasonic's response of 17 June 2016, which notes:
(a) changes to the Patent Policy do not have any effect on any existing LOAs, which includes any LOAs submitted up to the date of the effective date of a Patent Policy.
(b) The relevant portion of Section 6.3.4 of the IEEE-SA Standards Board Operations Manual provides:
If, after providing a Blanket Letter of Assurance, the Submitter acquires an Essential Patent Claim or a controlling interest in an entity that owns or controls an Essential Patent Claim, the existing Submitter's Blanket Letter of Assurance shall apply to such acquired Essential Patent Claims unless the acquired entity or the prior holder of the acquired Essential Patent Claim has submitted a Letter of Assurance before the acquisition. Any Blanket Letter of Assurance submitted by the acquired entity or the prior holder of the acquired Essential Patent Claim before the acquisition shall continue to apply to acquired Essential Patent Claims covered by such assurance (but not to the acquirer's Essential Patent Claims). Letters of Assurance covering specified Essential Patent Claims shall continue to apply to specified Essential Patent Claims, whether acquired in the acquisition or held by the acquirer before the acquisition, as provided in this Operations Manual. Nothing in thi!
s paragraph shall prevent an acquiring party from asking a seller of an acquired Essential Patent Claim or an acquired entity to submit additional Letters of Assurance before closing of the acquisition.
(c) There is no retroactive element for any change to the Patent Policy.
2. Which form of LOA is required for PARs (projects) that were already in existence when the Patent Policy text was updated on 15 March 2015?
Fraunhofer concurs with Panasonic's response of 17 June 2016. For ease of reference, this is reproduced below:
Neither the Project Authorization Request (PAR) date nor the start of a project are relevant for LOAs. It is only the time of the submission of an LOA that has an impact on the format of the LOA. Any LOA submitted shall be made in the format of the then approved LOA form. The governing Patent Policy is the one that is in force at the date of the submission of the LOA.
3. Which form of LOA is required for PARs (projects) that were started on or after 15 March 2015?
Fraunhofer concurs with Panasonic's response of 17 June 2016. For ease of reference, this is reproduced below:
Neither the Project Authorization Request (PAR) date nor the start of a project are relevant for LOAs. It is only the time of the submission of an LOA that has an impact on the format of the LOA. Any LOA submitted shall be made in the format of the then approved LOA form. The governing Patent Policy is the one that is in force at the date of the submission of the LOA.
It is further noted that FAQ 84 and FAQ 85 set out the effective date of the Patent Policy.
Again, for ease of reference, these FAQs are set out below:
84. What is the effective date of the updated IEEE-SA Patent Policy?
The effective date of the updated IEEE-SA Patent Policy set forth in the IEEE-SA Standards Board Bylaws and IEEE-SA Standards Board Operations Manual is 15 March 2015.
85. Will the updated IEEE-SA Patent Policy apply to existing standards development projects currently underway as well as new standards development projects?
The updated policy will apply to any LOAs (for any project or standard) submitted on or after the effective date. See also question 84.
Please note that Topic 4 was addressed in Fraunhofer's response of 17 June 2016.
Overall Conclusion
Fraunhofer agrees with PatCom's conclusion that no change to is required for any FAQs relevant to 1-3 above, nor are any additional FAQs on this topic required.
We would be happy to discuss further.
Kind regards/Mit freundlichem Gruß,
Stefanie Mielert
Rechtsanwältin
_________________________________________________________________________
Abteilungsleitung Legal Corporate Governance
Phone: +49(0)89-1205-2800 Fax: +49 (0)89-1205-7557
mailto: stefanie.mielert@xxxxxxxxxxxxxxxx
Fraunhofer Gesellschaft e.V.
Hansastraße 27C
80686 München
http://www.fraunhofer.de
_________________________________________________________________________
From: Don Wright <don@xxxxxxxxxxxxxxxxxxxxxxxx>
Subject: [PP-DIALOG] Applicability of LOAs
Date: 1 June 2016 at 21:32:06 GMT+2
To: PP-DIALOG@xxxxxxxxxxxxxxxxx
Reply-To: Don Wright <don@xxxxxxxxxxxxxxxxxxxxxxxx>
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 March 2015?
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 <mailto: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