Intellectual Property in Standards

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  • Intellectual property rights consist of three distinct categories: copyright, patents, and trademarks. This will give you a general overview of each category. Copyright is ownership of the expression of ideas presented in a work. The work can be written or graphic or an artistic creation. Copyright ownership exists from the moment of creation in a tangible form. Registration of the work is not required for copyright ownership. Ownership is perceived to exist upon creation. Copyright ownership basically conveys to the owner the right to control reuse of the expression. It does not cover the actual facts contained therein, merely the method of expression of those facts. A registered patent is the actual ownership of the ideas or process involved with generating a product. Ownership of a patent permits you to control the use of your invention. It is a fairly lengthy process to obtain a registered patent as the U.S. Patent and Trademark Office must rule on its uniqueness, usability and novelty of the invention. Prior to actual registration of a patent, an applicant must maintain the confidentiality of the information. Trademarks are composed of three subgroups of marks: trademarks, service marks and certification marks. IEEE Standards has registered marks in each category. A trademark is a word, name or symbol used to identify goods and distinguish them from those manufactured by another entity. The National Electrical Safety Code® is a registered trademark of the IEEE. A service mark is also a word, name or symbol but it is used to identify a service and distinguish it from another's service. NESC® is also a registered service mark of the IEEE. A certification mark is an word, name or symbol used by a person other than the owner of the mark to certify that the product or quality is consistent with that of the mark's owner. POSIX® is a registered certification mark of the IEEE.
  • The Copyright Act of 1976 made a dramatic change to U.S. copyright law. Copyright was now deemed to exist from the moment of creation. Thus anything that is created is deemed to be owned by its creator. Additionally, a work no longer needs to be published in order to be protected. Therefore, even your scribbles on a piece of note paper constitute copyrighted material that you own and control. The NII (National Information Infrastructure) and the GII (Global Information Infrastructure) are causing lawmakers and copyright owners to assess the ability of current copyright law to protect owners’ rights in a digital environment. While at this point the changes being talked about are not significant, they will make it clear that copyright protection is afforded to owners in the digital environment, making it a requirement to honor the rights accorded to owners. It is a requirement under the IEEE Bylaws that copyright ownership of all material published by the IEEE resides with the IEEE. The Standards Department accomplishes the transfer of copyright ownership from the volunteer authors to the Institute via the Project Authorization Request (PAR) form.
  • A Project Authorization Request (PAR) form is required for all standards projects upon initiation. The form contains a signature block that is typically signed by the working group chair that reads: “In consideration of my appointment and the publication of the Standards Publication identifying me, at my option, as an Official Reporter, I agree to avoid knowingly incorporating in the Standards Publication any copyrighted or proprietary material of another without such other’s consent and acknowledge that the Standards Publication shall constitute a ‘work made for hire’ as defined by the Copyright Act, and, that as to any work not so defined, I agree to and do hereby transfer any right or interest I may have in the copyright to said Standards Publication to IEEE.” This effectively transfers the entire work product of the working group to the IEEE. It is also the first of many reminders to the working group that if they intend to incorporate material that is copyrighted to another entity, permission to do so must be obtained from the owner. IEEE cannot publish any material for which it does not hold copyright or have a permission release form. The person who signs the PAR form transferring the copyright should ensure that all participants in the working group understand matters of ownership.
  • There is a specific copyright notice statement that is applicable to all draft standards. You can obtain the most current statement through your project editor or through the Electronic Publishing Manager. This statement makes the recipient of the document aware of its copyright ownership and permits reproduction without notice for the purposes of standards development. It also authorizes the submittal of drafts into the international standards forum; however, this process requires notice of the submittal to the Administrator, Intellectual Property. The notice also provides direction to anyone else wishing to make a copy of the draft. The copyright notice is required regardless of the format of the draft. There is a specific draft notice that is available for electronically posted documents. These notices are updated from time to time based on changes in use and copyright law and requirements. It is always worth a phone call or an e-mail to your project editor, staff liaison, or someone else on the staff to ensure that you are using the most current or applicable notice. Also, you will note that each page of the draft document also has a footer which contains a shortened copyright notice, advising of the draft status of the document. There is also a special copyright notice applicable for source code packages contained in standards documents. This notice, too, sets forth the permissible uses and advises that all other uses require some type of authorization from the IEEE Standards Department .
  • Material that is said to be in the public domain is available to all users without permission and without royalty. In order for material to be legitimately considered public domain, it must be constructively dedicated to the public domain. The mere distribution of copyrighted material and its being publicly available does not mean that it is public domain material. One of the key elements in maintaining and protecting copyright ownership of a work is the rigorous use of copyright notices on the documents.
  • From time to time, working groups determine that tables, figures or portions of text from another copyrighted work would make a valuable addition to a standard. IEEE standards may contain material from other copyrighted works. However, it is the responsibility of the sponsor to obtain written permission from the copyright owner for the reuse. Permission should be obtained regardless of the substantiality of the material, e.g., even just one table out of a 50-page original document. It is recommended that these letters be included with the submittal of the draft to RevCom. The IEEE Standards Companion provides working groups with sample letters of request for permission as well as a sample of a letter of permission, which notes the requirements for publication within an IEEE standard. Please note that this permission is for reuse of material as it appears in the original document. Letters of request and permission for contributions to a work in progress for ongoing revision and inclusion in a draft standards project would require some changes to the wording of these sample letters.
  • IEEE Standards patent policy allows patented technology to be included in an IEEE standard provided that there is technical justification for doing so. The basic requirement for the inclusion is that the patent holder has provided to the IEEE a letter of assurance regarding the licensing of the technology. Please also note that the patent policy applies to use of known patented technology.
  • If an entity believes that it is not being treated fairly and in accordance with the letter of assurance that is on file, the entity may pursue its claim through the judicial system. All letters of assurance that are submitted will be made available to the public upon request. Additionally, a database linking patent information on file to the applicable standard is available on the IEEE Standards website (http://standards.ieee.org/db/patents/). Please note that there is a patent disclaimer notice that appears in the front matter of every IEEE standard that specifically says that “ no position is taken with respect to the existence or validity of any patent rights in connection therewith .” The first sentence of the public notice also advises that "attention is called to the possibility that implementation of this standard may require use of subject matter covered by patent rights." This makes it clear that the IEEE has not performed a patent search to attest to applicability.
  • The letter, or statement, of assurance from the patent holder must convey one of three things that the patent holder is willing to do: (1) the letter must state that the patent holder will not enforce its patent rights against implementers of the standard; or (2) the letter must state that the patent holder will offer a royalty-free license under reasonable terms and conditions to anyone making the request, or in other words, on a non-discriminatory basis; or (3) the letter must state that the patent holder will offer a license under reasonable rates, terms and conditions to anyone making the request (non-discriminatory). This does not mean that patent holders may not negotiate different rates, terms and conditions with various licensees. It means that, if taken into a court of law, the patent holder will have to prove that the sum total of the differences still amount to non-discriminatory licensing. The patent holder cannot be perceived to be excluding any entity from the market place. It is presumed that market forces will determine what is reasonable.
  • Bullets 1 and 2: Make regular calls for patent information. At working group meetings, regularly remind participants to come forward with any knowledge that they have of companies claiming patents on technology to be covered by the project. If the participant is not an employee of the entity claiming the patent, then the working group chair needs to contact the company directly and furnish them with a copy of the draft document. It is up to the patent holder to make an assessment of applicability. If they feel their patent does not apply, request a letter for the IEEE files. If they feel that their patent does apply, request a letter of assurance to proceed with inclusion of the technology in our document. If the participant is an employee of the company, request that they contact their intellectual property department for an assessment of applicability. Bullet 3: All letters of assurance or of non-applicability should be forwarded to the PatCom Administrator for the IEEE Standards Department. The original letter will be placed in the project file and the information will be added to the patent database. If the letter is not in compliance with the IEEE Standards policy, the PatCom Administrator will follow up with the organization to ensure that the letter is clarified.
  • As mentioned previously, there are three different types of marks: trademarks, service marks, and certification marks. The IEEE has registered marks in all three categories. Products such the National Electrical Safety Code® are registered trademarks of the IEEE, as it represents an important product that the IEEE delivers to its customers. National Electrical Safety Code and NESC® are both registered as trademarks and service marks for IEEE. Both terms are used to describe both the IEEE’s product and its service in this area. The term POSIX® has been accorded registration only as a certification mark. The certification mark is used by other manufacturers to indicate that their goods and services comply with the requirements of the IEEE’s POSIX products.
  • In many cases, a mark is registered in order to benefit financially from its use by others. Marks are typically licensed with royalties for use by others. The Standards Department registers its marks for different reasons. In this fashion, the IEEE can protect against others using its mark when their product is not the same. It is used to distinguish the IEEE’s products and services. The IEEE does not license others to use its marks on their products. Registration may also provide some degree of insulation to the IEEE in a potential case of product liability. Registration also helps to promote name recognition and association with standards for the IEEE.
  • There are many places to go with all types of questions you may have: Bullets 1, 2, and 3: Your first resource should be the IEEE Bylaws and IEEE-SA Operations Manual, the IEEE-SA Standards Board Bylaws and IEEE-SA Standards Board Operations Manual, and the IEEE Standards Companion. All of these documents are available on the IEEE Standards website. Bullet 4: You will also find a series of Frequently Asked Questions (FAQs) on the Web. The IEEE Standards website address is: http://standards.ieee.org/. For intellectual property questions, please feel free to contact the IEEE Standards intellectual property administrator by phone, +1-732-562-3804. You can also access your staff liaison and your project editor. For patent and/or patent letter of assurance questions, please feel free to contact the PatCom Administrator at: +1-732-562-3806.
  • Intellectual Property in Standards

    1. 1. Intellectual Property
    2. 2. Intellectual Property <ul><li>Copyrights </li></ul><ul><li>Patents </li></ul><ul><li>Trademarks </li></ul>
    3. 3. Copyright <ul><li>Current US copyright law — the author of a work is deemed to own the copyright from the moment of creation </li></ul><ul><li>IEEE Bylaws require copyright to all material to be held by the IEEE </li></ul><ul><li>Standards program accomplishes transfer of copyright ownership through the Project Authorization Request (PAR) form </li></ul>
    4. 4. Project Authorization Request (PAR) Form <ul><li>Official reporter or working group chair signs PAR transferring copyright on behalf of the entire working group to the IEEE </li></ul><ul><li>Working group Chair should make this commitment clear to working group participants </li></ul><ul><li>If the official reporter or chair changes during the course of the project, a revised PAR must be submitted to the NesCom Secretary </li></ul>
    5. 5. Documentation <ul><li>Copyright and trademark notices and statements must appear on all draft versions </li></ul><ul><li>Notices/statements must appear in both paper and electronic formats </li></ul><ul><li>Special notice must appear for unique inserts, i.e., source code packages </li></ul>
    6. 6. Identifying public domain material <ul><li>Material must be officially labeled as “public domain” material, not merely transmitted via publicly accessible means </li></ul><ul><li>Maintenance of copyright notices and statements is the key to confirming copyright ownership of the work </li></ul><ul><li>Material does not belong to the public domain simply by virtue of having been disseminated on the Internet </li></ul><ul><li>Dissemination of copyrighted material via private e-mail does not put the material into the public domain </li></ul>
    7. 7. Use of previously copyrighted material <ul><li>IEEE Standards may contain material from other copyrighted works </li></ul><ul><li>Inclusion of such material requires a letter of permission from the copyright holder </li></ul><ul><li>Permission should be sought from the copyright owner no matter the amount of material to be included </li></ul><ul><li>The sponsor, through the working group, is responsible for obtaining letters of permission </li></ul><ul><li>Letters of permission should accompany the submittal of a standard to RevCom </li></ul><ul><li>Sample letters requesting and granting permission appear in the IEEE Standards Companion </li></ul>
    8. 8. Patent policy <ul><li>Patented technology may be included in an IEEE standard provided that there is technical justification </li></ul><ul><li>IEEE takes no position with respect to the existence or validity of any patent rights </li></ul><ul><li>IEEE working groups should not pursue a patent search or make an assessment of the reasonableness of terms and conditions of a license </li></ul>
    9. 9. Patent policy cont’d <ul><li>Prior to approval of the standard by the Standards Board, the patent holder must provide a letter of assurance </li></ul><ul><li>Letter of assurance will be made publicly available upon request </li></ul><ul><li>Letter of assurance may contain terms and conditions of license </li></ul>
    10. 10. Letter of assurance <ul><li>Must do one of three things: </li></ul><ul><ul><li>State the patent holder will not enforce its patent rights against implementers of the standard </li></ul></ul><ul><ul><li>Offer a nondiscriminatory royalty-free license with reasonable terms and conditions </li></ul></ul><ul><ul><li>Offer a nondiscriminatory license with reasonable rates, terms, and conditions </li></ul></ul>
    11. 11. Sponsor/working group responsibilities <ul><li>Working group is responsible for making regular announcements and requests for relevant patent information </li></ul><ul><li>Working Group Chair must solicit LoAs in response to a Call for Patents </li></ul><ul><li>Working group is responsible for furnishing a copy of the draft standard to any alleged patent holder for review </li></ul>
    12. 12. Trade and other marks <ul><li>Trademark — distinguishes one manufacturer’s goods from another </li></ul><ul><ul><li>example: National Electrical Safety Code® </li></ul></ul><ul><li>Service mark — identifies services offered </li></ul><ul><ul><li>example: Get IEEE 802( SM ) (Registration pending) </li></ul></ul><ul><li>Certification mark — used to certify quality of goods produced </li></ul><ul><ul><li>example: POSIX® </li></ul></ul>
    13. 13. Why register a mark? <ul><li>Provides additional legal protection for brand name associated with products and services </li></ul><ul><li>Helps mitigate liability associated with misuse of product or certification </li></ul><ul><li>Promotes name recognition/branding </li></ul>
    14. 14. Resources <ul><li>IEEE Bylaws </li></ul><ul><li>IEEE-SA Operations Manual </li></ul><ul><li>IEEE-SA Standards Board Bylaws and IEEE-SA Standards Board Operations Manual </li></ul><ul><li>IEEE Standards Companion </li></ul><ul><li>Frequently Asked Questions (FAQs) on the Web </li></ul><ul><li>http://standards.ieee.org/ </li></ul><ul><li>Administrator, Intellectual Property </li></ul><ul><ul><li>+1-732-562-3804 </li></ul></ul><ul><li>PatCom Administrator +1-732-562-3806 </li></ul>

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