GLOBAL ICT standardISATION FORUM FOR INDIA

 

INTELLECTUAL PROPERTY RIGHTS POLICY

 

Contents

1.0 Introduction
2.0 Disclosure of IPRs
3.0 Procedures for Committees
4.0 Availability of Licences
5.0 Information on IPR by GISFI
6.0 Non-availability of Licences prior to publication
      6.1 Existence of a viable alternative technology
      6.2 Non-existence of a viable alternative technology
      6.3 Non-availability of licences
7.0 GISFI’s ownership of IPRs
8.0 Confidentiality
9.0 Reproduction of Standards Documentation
10.0 Law and Regulation
11.0 Policy Decisions
12.0 Violation of Policy
13.0 Definitions
Appendix

 

1.0 INTRODUCTION                                                                                                                                                                                                                                                       


1.1 GISFI’s objectives are to create standards and technical specifications that are applicable to the equipment, which can be deployed in Indian telecom network seamlessly, and meets all the desired technical requirements. However, in order to meet this objective, the GISFI’s IPR Policy looks for reducing the risk to GISFI, members, and others using the GISFI standards and technical specifications, that investment in the preparation, adoption and application of standards could be wasted as a result of an essential IPR for a standard or technical specification being unavailable, and looks for maintaining balance between the needs of standardisation for general use in the field of ICT and the rights of the owners of IPRs.


1.2 IPR holders, whether members of GISFI or third parties, should be adequately and fairly rewarded for the use of their IPRs in the implementation of standards and technical specifications.


1.3 GISFI shall take reasonable measures to ensure, as far as possible, that its activities which relate to the preparation, adoption and application of standards and technical specifications, enable standards and technical specifications to be available to potential users in accordance with the general principles of standardisation.


2.0 DISCLOSURE OF IPRs                                                                                                                                                                                                                                           


2.1 A member submitting a technical proposal for development of a standard or technical specification shall, on a bona fide basis, draw the attention of GISFI, in a timely fashion, to any of the IPR which might be essential if the proposal is adopted. However, it does not imply any obligation on members to conduct IPR searches.
 

2.2 The obligations pursuant to above are deemed to be fulfilled in respect of all existing and future members of a patent family if GISFI has been informed of a member of this patent family in a timely fashion. Information on other members of this patent family, if any, may be voluntarily provided.


3.0 PROCEDURES FOR COMMITTEES                                                                                                                                                                                                                   


3.1 shall establish guidelines for the chairmen of committees with respect to essential IPRs.


4.0 AVAILABILITY OF LICENCES                                                                                                                                                                                                                              


4.1 When an essential IPR relating to a particular standard or technical specifications is brought to the attention of GISFI, the Director General of GISFI shall immediately request the owner to give an irrevocable undertaking in writing that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions, within three months, under such IPR to at least the following extent


a. Manufacture, including the right to make or have made customised components and sub-systems to the licensee’s own design for use in manufacture.
b. Sell, lease, or otherwise dispose of equipment so manufactured.
c. Repair, use, or operate equipment.
d. Use methods.


4.2 Such undertaking may be made subject to the condition that those who seek licences agree to reciprocate.


4.3 In the event a member assigns or transfers ownership of an essential IPR that it disclosed to GISFI, the member shall exercise reasonable efforts to notify the assignee or transferee of any undertaking it has made to GISFI with regard to that essential IPR.


4.4 An undertaking with regard to a specified member of a patent family shall apply to all existing and future essential IPRs of that patent family unless there is an explicit written exclusion of specified IPRs at the time the undertaking is made. The extent of any such exclusion shall be limited to those explicitly specified IPRs.


4.5 As long as the requested undertaking of the IPR owner is not granted, the committee Chairmen should, if appropriate, in consultation with the GISFI Secretariat, use their judgment as to whether or not the committee should suspend work on the relevant parts of the standard or technical specifications until the matter has been resolved and/or submit for approval any relevant standard or technical specifications.


4.6 At the request of any party, initially for a specific standard or technical specifications or a class of standards/technical specifications, GISFI shall arrange to have carried out in a competent and timely manner an investigation including an IPR search, with the objective of ascertaining whether IPRs exist or are likely to exist which may be or may become essential to a proposed standard or technical specifications and the possible terms and conditions of licences for such IPRs. This shall be subject to the party meeting all reasonable expenses of such an investigation, in accordance with detailed arrangements to be worked out with it prior to the investigation being undertaken.


4.7 Members shall use one of the GISFI IPR Licensing Declaration forms at the Appendix to make their IPR licensing declarations.


5.0 INFORMATION ON IPR BY GISFI                                                                                                                                                                                                                         


5.1 Any published standard or technical specifications shall include information pertaining to essential IPRs which are brought to the attention of GISFI prior to such publication.


5.2 GISFI shall establish appropriate procedures to allow access to information at any time with respect to essential IPRs which have been brought to its attention.


6.0 NON-AVAILABILITY OF LICENCES PRIOR TO PUBLICATION                                                                                                                                                                   


6.1 EXISTENCE OF A VIABLE ALTERNATIVE TECHNOLOGY


6.1.1 Where prior to the publication of a standard or a technical specifications an IPR owner informs GISFI that it is not prepared to license an IPR in respect of a standard or technical specifications, the General Assembly shall review the requirement for that standard or technical specifications and satisfy itself that a viable alternative technology is available for the standard or technical specifications which is not blocked by that IPR and satisfies GISFI’s requirements.


6.2 NON-EXISTENCE OF A VIABLE ALTERNATIVE TECHNOLOGY


6.2.1 Where, in the opinion of the General Assembly, no such viable alternative technology exists, work on the standard or technical specifications shall cease, and the Director General of GISFI shall observe the following procedure


a. If the IPR owner is a member


i. Director General of GISFI shall request that member to reconsider its position.


ii. If that member, however, decides not to withdraw its refusal to license the IPR, it shall then inform the Director General of GISFI of its decision and provide a written explanation of its reasons for refusing to license that IPR, within three months of its receipt of the Director General’s request.


iii. Director General of GISFI shall then send the member’s explanation together with relevant extracts from the minutes of the General Assembly to the GISFI Counsellors for their consideration.


b. If the IPR owner is a third party


i. Director General of GISFI shall, wherever appropriate, request full supporting details from any member who has complained that licences are not available and/or request appropriate members to use their good offices to find a solution to the problem.


ii. Where this does not lead to a solution, the Director General of GISFI shall write to the IPR owner concerned for an explanation and request ultimately that licences be granted in accordance with the provisions.


iii. Where the IPR owner refuses the Director General’s request and decides not to withdraw its refusal to license the IPR or does not answer the letter within three months after the receipt of the Director General’s request, the Director General shall then send the IPR owner’s explanation, if any, together with relevant extracts from the minutes of the General Assembly to the GISFI Counsellors for their consideration.
 

6.2.2 Prior to any decision by the General Assembly, the committee should in consultation with the GISFI Secretariat use their judgment as to whether or not the committee should pursue development of the concerned parts of the standard or a technical specifications based on the non-available technology and should look for alternative solutions.


6.3 NON-AVAILABILITY OF LICENCES


6.3.1 Where, in respect of a published standard or technical specifications, GISFI becomes aware that licences are not available from an IPR owner in accordance with the provisions, that standard or technical specifications shall be referred to the Director General of GISFI for further consideration in accordance with the following procedure


a. The Director General shall request full supporting details from any member or third party who has complained that licences are not available in accordance with the provisions.


b. The Director General shall write to the IPR owner concerned for an explanation and request that licences be granted according to the provisions. Where the concerned IPR owner is a member, it shall inform the Director General of GISFI of its decision and provide a written explanation of its reasons in case of continuing refusal to license that IPR.


c. Where the IPR owner refuses the Director General’s request or does not answer the letter within three months, the Director General shall inform the General Assembly and, if available, provide the General Assembly with the IPR owner’s explanation for consideration. A vote shall be taken in the General Assembly on an individual weighted basis to immediately refer the standard or technical specifications to the relevant committee to modify it so that the IPR is no longer essential.


d. Where the vote in the General Assembly does not succeed, then the General Assembly shall, where appropriate, consult the GISFI Counsellors with a view to finding a solution to the problem. In parallel, the General Assembly may request appropriate members to use their good offices to find a solution to the problem.


e. Where this also does not lead to a solution, then the General Assembly shall request the concerned Standards Organisation to see what further action may be appropriate, including non-recognition of the standard or technical specifications in question.


6.3.2 In carrying out the foregoing procedure due account shall be taken of the interest of the enterprises that have invested in the implementation of the standard or technical specifications in question.


7.0 GISFI’s OWNERSHIP OF IPRs                                                                                                                                                                                                                              


7.1 The ownership of the copyright in standards and technical specifications documentation and reports created by GISFI or any of its committees shall vest in GISFI but due acknowledgement shall be given to copyrights owned by third parties that are identifiable in GISFI copyrighted works.


7.2 In respect of IPRs other than copyright in standards and technical specifications documentation and reports, GISFI shall only seek ownership of IPRs generated either by its employees or by organisations who are not members.


7.3 GISFI shall, on request by a non-member, grant licences to that non-member on fair and reasonable terms and conditions in respect of any IPRs, other than those owned by GISFI. Members shall be allowed to use IPRs owned by GISFI, free of charge.


8.0 CONFIDENTIALITY                                                                                                                                                                                                                                                  


8.1 The proceedings of a committee shall be regarded as non-confidential except as expressly provided below and all information submitted to a committee shall be treated as if non-confidential and shall be available for public inspection unless the information is


a.  In written or other tangible form.
b.  Identified in writing, when submitted, as confidential.
c. First submitted to, and accepted by, the chairman of the committee as confidential.


8.2 Confidential information incorporated in a standard or technical specification shall be regarded as non-confidential by GISFI and its members, from the date on which the standard or technical specification is published.


9.0 REPRODUCTION OF STANDARDS DOCUMENTATION                                                                                                                                                                               


9.1 Members may make copies of standards and technical specifications documentation produced by GISFI for their own, use free of charge, but may not distribute such copies to others.


10.0 LAW AND REGULATION                                                                                                                                                                                                                                     


10.1 The policy shall be governed by the laws of India. However, no member shall be obliged by the policy to commit a breach of the laws or regulations of its country or to act against supranational laws or regulations applicable to its country insofar as derogation by agreement between parties is not permitted by such laws.


10.2 Any right granted to, and any obligation imposed on, a member which derives from Indian law and which are not already contained in the national or supranational law applicable to that member is to be understood as being of solely a contractual nature.


11.0 POLICY DECISIONS                                                                                                                                                                                                                                             


11.1 Without prejudice to GISFI’s Rules and Regulations, no decisions shall be taken by GISFI in relation to implementation of the policy unless supported by a three-fifths majority of the individual votes cast by members.


12.0 VIOLATION OF POLICY                                                                                                                                                                                                                                       


12.1 Any violation of the policy by a member shall be deemed to be a breach, by that member, of its obligations to GISFI. The GISFI General Assembly shall have the authority to decide the action to be taken, if any, against the member in breach, in accordance with the GISFI Rules and Regulations.


13.0 DEFINITIONS                                                                                                                                                                                                                                                         


13.1 Committee shall mean any Technical Body of GISFI and shall include GISFI Projects, Technical Committees, GISFI Partnership Projects, and their Working Groups.


13.2 Confidential Information shall mean all the information deemed to be confidential pursuant to confidentiality clause of the policy, disclosed directly or indirectly to the member.


13.3 Equipment shall mean any system, or device fully conforming to a standard.

 

13.4 Method shall mean any method or operation fully conforming to a standard.
 

13.5 Essential, as applied to IPR, means that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state-of-the-art generally available at the time of standardization, to make, sell, lease, otherwise dispose of, repair, use or operate equipment or methods which comply with a standard without infringing that IPR. For the avoidance of doubt in exceptional cases where a standard can only be implemented by technical solutions, all of which are infringements of IPRs, all such IPRs shall be considered essential.
 

13.6 IPR shall mean any intellectual property right conferred by statute law including applications therefor, other than trademarks. For the avoidance of doubt, rights relating to get-up, confidential information, trade secrets, or the like, are excluded from the definition of IPR.
 

13.7 Manufacture shall mean production of equipment.
 

13.8 Member shall mean a member of GISFI.


13.9 Policy shall mean GISFI’s Intellectual Property Rights Policy.


13.10 Standard shall mean any standard adopted by GISFI, but not any standards, or parts thereof, not made by GISFI. The date on which a standard is considered to be adopted by GISFI for the purposes of this policy shall be the date on which the technical content of that standard was available to all its members.


13.11 Technical specifications shall mean any technical specification adopted by GISFI, but not any technical specifications, or parts thereof, not made by GISFI. The date on which a technical specification is considered to be adopted by GISFI for the purposes of this policy shall be the date on which the technical content of that technical specification was available to all its members.


13.12 Patent family shall mean all the documents having at least one priority in common, including the priority document(s) themselves. For the avoidance of doubt, document refers to patents, utility models, and applications therefor.
 

 

Appendix

IPR Licensing Declaration Forms

IPR HOLDER/ORGANISATION (“Declarant”)

Legal Name:

CONTACT DETAILS FOR LICENSING INFORMATION

Name and Title:

Department:

Address:

 

 

Telephone:                                                                                                   Fax:

Email:                                                                                                           URL:

GENERAL IPR LICENSING DECLARATION

In accordance with Clause 4.1 of the GISFI IPR Policy the Declarant and/or its affiliate hereby informs GISFI that (check one only):

with reference to GISFI standard(s) or technical specification(s) no.

_____________________________________________________________________________________, or

with reference to GISFI Project(s): _________________________________________________________, or

with reference to all GISFI standards and technical specifications

and with reference to (check one only):

IPR(s) contained within technical contributions made by the Declarant and/or its affiliates, or

any IPRs

the Declarant hereby irrevocably declares that it and its affiliates are prepared to grant irrevocable licenses under its/their IPR(s) on terms and conditions which are in accordance with the provisions of GISFI’s IPR policy, in respect of the standard(s), technical specification(s), or the project(s), as identified above, to the extent that the IPR(s) are or become, and remain essential to practice that/those standard(s) or technical specification(s) or, as applicable, any standard or technical specification resulting from proposals or work items within the current scope of the above identified GISFI project(s), for the field of use of practice of such standard or technical specification.

This irrevocable undertaking is made subject to the condition that those who seek licences agree to reciprocate (check, if applicable).

The construction, validity and performance of this General IPR licensing declaration shall be governed by the laws of India.

Terms in this form have the meaning provided in GISFI IPR Policy.

SIGNATURE

 

 

By signing this General IPR Licensing Declaration form, you represent that you have the authority to bind the Declarant and/or its AFFILIATES to the representations and commitments provided in this form.

Name of authorized person:

Title of authorized person:

Place, Date:

Signature:

Please return this form duly signed to: GISFI Director-General

IPR INFORMATION STATEMENT AND LICENSING DECLARATION

IPR HOLDER / ORGANISATION (“Declarant”)

Legal Name:

CONTACT DETAILS FOR LICENSING INFORMATION

Name and Title:

Department:

Address:

 

 

Telephone:                                                                                                   Fax:

Email:                                                                                                           URL:

IPR INFORMATION STATEMENT

In accordance with Clause 4.1 of the GISFI IPR Policy the Declarant and/or its AFFILIATES hereby informs GISFI that it is the Declarant’s and/or its AFFILIATES’ present belief that the IPR(s) disclosed in the attached IPR Information Statement Annex may be or may become ESSENTIAL in relation to at least the GISFI Work Item(s), STANDARD(S) and/or TECHNICAL SPECIFICATION(S) identified in the attached IPR Information Statement Annex.

The Declarant and/or its AFFILIATES (check one only):

are the proprietor(s) of the IPR(s) disclosed in the attached IPR Information Statement Annex.

are not the proprietor(s) of the IPR(s) disclosed in the attached IPR Information Statement Annex.

IPR LICENSING DECLARATION

In accordance with Clause 6.1 of the GISFI IPR Policy the Declarant and/or its AFFILIATES hereby irrevocably declares the following (check one only, and subordinate, where applicable):

To the extent that the IPR(s) disclosed in the attached IPR Information Statement Annex are or become, and remain ESSENTIAL in respect of the GISFI Work Item, STANDARD and/or TECHNICAL SPECIFICATION identified in the attached IPR Information Statement Annex, the Declarant and/or its AFFILIATES are prepared to grant irrevocable licences under this/these IPR(s) on terms and conditions which are in accordance with Clause 6.1 of the GISFI IPR Policy.

This irrevocable undertaking is made subject to the condition that those who seek licences agree to reciprocate (check box if applicable).

The Declarant and/or its AFFILIATES are not prepared to make the above IPR Licensing Declaration (reasons may be explained in writing in the attached IPR Licensing Declaration Annex).

The construction, validity and performance of this IPR information statement and licensing declaration shall be governed by the laws of France.

Terms in this form have the meaning provided in the GISFI IPR Policy.

SIGNATURE

By signing this IPR Information Statement and Licensing Declaration form, you represent that you have the authority to bind the Declarant and/or its AFFILIATES to the representations and commitments provided in this form.

Name of authorized person:

Title of authorized person:

Place, Date:

Signature:

Please return this form duly signed to GISFI Director-General

 

IPR Information Statement

Standard, technical specification or GISFI project item

Proprietor

Application No.

Publication No.

Patent/Application

Title

Country of registration

Additional Information

 

Other members of this Patent Family, if any*

Project or Standard name

Work Item or

Standard No.

Illustrative Specific part of the standard (e.g. Section)

Version (V.X.X.X)

 

 

 

 

 

Application No.

Publication No.

Country of registration

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

* Information on other members of a Patent Family is provided voluntarily.

Please return this form together with the “IPR Information Statement and Licensing Declaration form” to GISFI Director-General

 

 

 

 

 

IPR Licensing Declaration

Optional written explanation of reasons for not making the IPR Licensing Declaration

The Declarant and/or its AFFILIATES are unwilling to grant irrevocable licences under the IPR(s) disclosed in the attached IPR Information Statement Annex on terms and conditions which are in accordance with Clause 6.1 of the GISFI IPR Policy.

The Declarant and/or its AFFILIATES are unable to grant irrevocable licences under the IPR(s) disclosed in the attached IPR Information Statement Annex on terms and conditions which are in accordance with Clause 6.1 of the GISFI IPR Policy, because

the Declarant and/or its AFFILIATES are not the proprietor of the IPR(s) disclosed in the attached IPR Information Statement Annex,

the Declarant and/or its AFFILIATES do not have the ability to licence the IPR(s) disclosed in the attached IPR Information Statement Annex on terms and conditions which are in accordance with Clause 6.1 of the GISFI IPR Policy. In this case, please provide Contact information of those who may have this ability.

Legal Name:

Name and Title:

Department:

Address:

Telephone:                                                                          Fax:

Email:

Other reasons (please specify):

 

 

 

 

 

 

 

 

 

 

Please return this form together with the “IPR Information Statement and Licensing Declaration Form” to GISFI Director-General,

 

 

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