IPR and Joining GlobalPlatform:
||What are the patent declaration obligations of a
company at the time of joining GlobalPlatform?
||None. A new Member becomes subject to the
consortium's IPR Policy solely in a forward-looking capacity. Of
course, if a new Member, in it's capacity as an implementer of a
standard, has had a patent brought to its attention, it would be
helpful to have that patent brought to GlobalPlatform's attention.
||When else should a member bring a patent to the
attention of GlobalPlatform?
||Every meeting of a working group commences
with the reading of the following notices:
"Please be aware that this meeting is being held under the
GlobalPlatform Intellectual Property Rights Policy. If you do not
have a copy of this policy, please contact (or inform) the chairperson
during this meeting. You may also view and download a copy of the
policy at the Membership section of the GlobalPlatform website,
located here: http://www.globalpl
At this time, each person in attendance is required to inform
the chairperson if they are personally aware of any claims under any
patent applications or issued patents which would be likely to be read
upon by an implementation of any specification or other work product
which is the subject of this meeting. You need not be the inventor of
such patent or patent application in order to inform GlobalPlatform of
its existence, nor will you be held responsible for expressing a good
faith belief which proves to be inaccurate."
Knowledge of an existing and/or potentially conflicting patent
should be declared by any individual attending a GlobalPlatform
meeting, based on their best and available knowledge. A declaration
should also be made when a Member company realizes they may have a
patent that might be essential to any already approved standard, or
to a GlobalPlatform work-in-progress, whether or not the Member is a
member of the working group developing that work-in-progress.
||What happens when such a patent is brought to
||The appropriate members of the Technical
Committee (in the case of an already adopted standard) or the working
group (in the case of a standard under development) will assess the
case in light of the disclosure and the commitments (if any) made by
the disclosing member regarding the patent,and analyze what to do with
the approved standard and/or GlobalPlatform work-in-progress.
||Where can a Member find information on declarations
that have been made?
||Declarations are listed on the public website
statements made on GlobalPlatform's public website are those provided
by the owners of the patent claims in question. GlobalPlatform is
not in a position to assess whether or not any such claim is indeed
essential, and therefore takes no position on the validity or
invalidity of any of the listed assertions of essentiality.
Implementers of GlobalPlatform standards are therefore advised to
engage in their own due diligence prior to proceeding with their
Call For Patents:
||In the situation where a Full or
Participating Member is required to provide a 'patent call response'
with respect to a certain specification or amendment (for which such
Member has not participated in the relevant Committee or Working Group)
prior to final adoption thereof, what information should the Member
provide regarding the identification of its patents and IPR?
||The Member is expected to identify (a) the
specific patent claims within a patent that would be infringed, and (b)
the portion of the draft standard that would result in the
infringement. It is not necessarily to give an explanation of why or
how that conclusion was reached, although it is helpful if the Member
||If a Member later discovers, after a
request for a 'patent call response,' that some missing patents or IPRs
have been infringed, what happens from the IPR Policy standpoint?
||Regarding undisclosed IPR Rights, if the
failure to disclose was intentional and false, then IPR Policy Section
1.1(d) applies, and the Member is obligated to grant a RAND-free
license with respect to the undisclosed Rights to anyone (Member or
Non-Member alike) that desires to implement that specification. On the
other hand, if the failure was not intentional and false, then IPR
Policy Section 1.5 applies, and the Member will be asked to provide a
RAND-free license as above. If a RAND-free license cannot be obtained,
the GlobalPlatform Specification is referred back to the relevant
technical committee for further consideration.
||In a call for patents, who is expected to
be 'the individual Member representative completing the response'?
||GlobalPlatform does not wish to restrict
Members in how they manage patent calls. Therefore, Members are free to
decide who they wish to have complete the form. This allows Members to
follow whatever internal clearance and authorization procedures they
wish in connection with responding to a patent call. Often, however,
this will be the Member's primary GlobalPlatform representative, as
||Is the individual Member representative required to
finish all patent surveillance at his or her Member company within the
suggested response period and inform the GP board of the results
||GlobalPlatform does not mandate the degree of
diligence that a Member must take to determine whether or not it owns a
patent claim that might be infringed. Indeed, Section 1.4 of the IPR
Policy explicitly states that Members and Member representatives are
not obligated to conduct searches for patents or other IPR which would
be infringed by the implementation of a GlobalPlatform specification.
That said, it is the hope that Members will give thought to whether
they have any patents that are relevant, and the purpose of the
requirement of someone signing a form is that a Member will presumably
not want anyone to sign the form unless appropriate consideration has
been given. Regarding timing, a Member is required to respond in the
applicable 60 day deadline stated in the IPR Policy. As a practical
matter, this also sets the deadline for completion of whatever
diligence the Member wishes to conduct.
||Is a Member released from any such 'patent
call response' obligation if the Member company has not participated in
the Committee or Working Group concerned?
||It does not make any difference under this
provision whether the Member has participated in the Committee or
Working Group or not - the same goal applies (i.e., to learn whether
there is a patent claim owned by it that would be infringed, and if so,
whether and how it is available). Accordingly, if the claim and the
relevant portion of the draft standard are disclosed, then the Member
can refuse to license the patent claim, or reserve the right to do so
but charge a royalty. However, if it is aware of such a claim and does
not disclose it, then it could not later withhold, or charge a royalty,
for that claim.
||When responding to a Call for Patents, does a
Member company need to respond on behalf of its parent company?
||GlobalPlatform's IRP policy applies to the
organization that has signed the Membership Agreement and its
subsidiaries. If the subsidiary is a company in its own right and
signed the Membership Agreement, GlobalPlatform's IPR policy would not
apply to the parent company; therefore patent call obligations would
not directly apply to parent entities. However, in a patent call
situation, if a Member representative has knowledge of potentially
necessarily infringing IPR, they would be required to disclose that,
whether or not the IPR belongs to a parent or a third party.
Importantly, however, they have no obligations with respect to that
IPR, since it does not have the legal right to commit that IPR.
||How does the contribution of copyrighted
||Those who contribute their copyrighted
materials to GlobalPlatform retain copyright ownership of their
original work, while at the same time granting GlobalPlatform and all
implementers of GlobalPlatform specifications full rights to revise,
modify, and create derivative works based on that original work, under
GlobalPlatform's own copyright.
The language in the IPR Policy is intended to make clear that
ownership of copyright in a submitted work remains with the submitting
company. However, by making the contribution, the contributor agrees
that GlobalPlatform will own the copyright in all resulting
GlobalPlatform work product that incorporates a submitted work.
||We are a GlobalPlatform Member and want to
make a technical contribution in the form of an IP submission to the
organization. By doing so, would our company lose its ability to
protect underlying patents and other IPR related to the submission?
||Not at all. A GlobalPlatform Member retains
full ownership and control of all its relevant IPR. The IPR Policy
provides that the submitter will continue to own the copyright in the
text of its submission, while GlobalPlatform will own the copyright in
the full text of the final work product, which will typically be made
up of contributions from multiple members and draftspersons. The only
impact on a submitter's patent portfolio is to honor the commitment it
made with respect to Specification implementers at the time of its
submission (e.g. by providing a license on reasonable and non-
discriminatory terms without the need to pay a royalty or other fee, or
by providing a covenant not to assert).
||If I'm a member of another standards
organization, and GPI references a standard developed by that
organization, do I have the same obligations to GPI regarding any
Essential Claims I may own under the referenced standard?
||No. Submissions made to each organization are
entirely separate and the GPI policy applies only to the elements of a
standard that GPI develops. When a GPI standard references a standard
developed by another organization, only the obligations (if any) that a
GPI member owes to the other organization will apply with respect to
the referenced standard (and then only under the other organization's
IPR policy, and not under the GPI policy).
||When a member contributes technology using
Attachment #2 of the IPR Policy, Member Submission of Technology Form
(the “Form”), how can the member commit to any and all knowledge
regarding third party IPR that may be infringed by the implementation
of the Specification (Section A.5)?
||When completing the Form, the assertion
required by Section A.5 of the Form is to be made by the member
representative submitting the form, based on information of which that
representative is personally aware. If that representative is not
personally aware of any Patent claim or other intellectual property
right of a third party that would be infringed by the implementation of
the Specification in question, nothing is required to be reported on
Exhibit B of the Form. The representative is not required to engage in
any investigation or other due diligence prior to submitting the Form.
Definition of Terms:
||What does the term 'necessarily infringed'
||This phrase means that it would be impossible
or infeasible to implement at least one required element of a
specification without infringing the patent claim in question, taking
into account technical and economic (other than any licensing fees for
the patent claim in question) considerations.
Indemnity Provisions in GlobalPlatform's Click
||What is the rationale for the indemnity
provisions in GlobalPlatform's Click License Agreement?
||As a standards organization, GlobalPlatform
works on a tight budget and must be careful to avoid potential
litigation. One way it does this is by requiring licensees of the
specifications to indemnify GlobalPlatform to the extent GlobalPlatform
is sued by a third party as a result of the licensee's use of the
||Has GlobalPlatform provided any exceptions to
the indemnity provisions?
||Without exception, GlobalPlatform has required
all of its specification licensees to agree to the indemnification
provisions in the click-wrap. As a result, GlobalPlatform cannot
justify modifying those terms for any one licensee.
||What risks would a GlobalPlatform Member or
Non-Member be exposed to by the indemnity provisions if it only intends
to read and evaluate the specification?
||If a Member or Non-Member accepts the license
agreement but only reads and evaluates the specification, there is
virtually no risk under the indemnification provision clause. This is
because the obligation to indemnify only applies to damages to
GlobalPlatform arising from third party claims in connection with the
use of the specification by the licensee. If the licensee never
implements and only evaluates, it is difficult to imagine what damages
a third party could ever claim from GlobalPlatform that relate to the