IPR Policy
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IPR Policy |
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OPEN IPTV FORUM
IPR Policy I. DEFINITIONS "Approved IPTV Specifications" means the IPTV Specifications (or parts thereof) which have been approved by the Steering Group pursuant to the Open IPTV Forum Agreement.
"Background IPR"
means Intellectual Property Rights, excluding Foreground IPR, which at the Effective
Date or thereafter are developed by, or become owned by,
or otherwise are or come into the possession of, a
Member and/or its Affiliates independently from its
activities as a Member under this Agreement. "Essential Patent(s)" means any patent and patent applications, throughout the world that (i) is owned, controlled or licensable (without need to pay royalties or other consideration to third parties other than its employees) by a Member or its Affiliates now or at any future time; and (ii) which contains one or more patent claims that are Necessary Claims. "Foreground IPR" means any new Intellectual Property Rights, excluding Background IPR, developed, invented, discovered, made, originated or created during the course of activities as a Member or Members under this Agreement. "Frand Terms" means fair reasonable and non-discriminatory terms and conditions. "Intellectual Property Rights" or "IPR" means any and all intellectual property rights including, but not limited to, patents, copyrights, trademarks, trade secret rights, inventions, know-how, object and source codes, algorithms, mask works, chip topography rights, utility models, and all improvements and amendments thereof, and all registrations, applications, renewals, extensions, continuations, divisions or reissues thereof now or hereafter in force (including any rights in any of the foregoing). "IPTV Specifications" means the specifications to be developed by the Members as a part of their activities in the Forum as the technological solutions for IPTV applications and for the purpose to establish an open IPTV standard (including portions thereof). The IPTV Specifications intended to be developed are outlined in the Open IPTV Forum Agreement hereto. "License Review Period" means the period of time defined as "License Review Period" in the Open IPTV Forum Agreement. "Necessary Claims" means (with respect to, as applicable, the IPTV Specifications or Approved IPTV Specifications) only those claims of any and/or all Essential Patents where (i) a Member or its Affiliates has the right and obligation to grant licenses under such claims of the nature agreed to be granted according to this Agreement and (ii) such claims would necessarily be infringed by implementation of the IPTV Specification or Approved IPTV Specification, as applicable. A patent claim is "necessarily infringed" only when there is no technically reasonable, non-infringing alternative for implementing such IPTV Specification or Approved IPTV Specification (or portion thereof) without infringing the relevant patent claim. II. INTELLECTUAL PROPERTY RIGHTS 1. Ownership 1.1 Any Background IPR, including, but not limited to, those made available to the Members for the development of the IPTV Specifications, shall remain the property of the Member owning it. No title to or ownership with regard to such Background IPR shall be transferred to any other Member as a result of this Agreement or of the performance of the Forum activities hereunder. 1.2 The Foreground IPR developed, invented, discovered, made, originated or created by one Member shall be solely owned by such Member. If Foreground IPR jointly owned by two or more Members is an Essential Patent, each such Member shall have the right and obligation to individually license out such Foreground IPR as per the provisions in Sub-Clause 1.1 provided that the jointly owning Members cannot – within a reasonable period of not less than forty five (45) days from written request by either such Member – reach an agreement through good faith discussions with respect to the Frand Terms for joint licensing pursuant to Sub-Clause 1.1. Members agree to divide, whenever possible, jointly owned Foreground IPR into solely owned Foreground IPR. 1.3 It is the owner's right and obligation to decide whether or not to file applications for registration and protection of patentable inventions and other Intellectual Property Rights forming part of Foreground IPR and bear all costs and expenses associated therewith. 2. Licensing - Right to Use 2.1 Subject to compliance with the License Review procedure set out in the Open IPTV Forum Agreement, each Member shall grant to all other Members (including their Affiliates) and any third-party who needs to take a license, a non-exclusive, world-wide, non-transferable (except to a successor in interest of all or the relevant part of the business of such other Members or Affiliates) license under Necessary Claims of its or its Affiliates Essential Patents on Frand Terms, solely to develop and have developed, design and have designed, make, have made, use, sell, offer to sell, import, export or otherwise dispose of the hardware and/or software products or systems fully compliant with the Approved IPTV Specifications, to provide the application and other services fully compliant with the Approved IPTV Specifications, or to operate the telecommunications systems compatible with the Approved IPTV Specifications, provided; (a) that each of such other Members (including its Affiliates) or third-party undertakes to grant back a license under Necessary Claims forming part of its Essential Patents to the first Member (including its Affiliates) on corresponding Frand Terms; and (b) further that each Member (including its Affiliates) so granting the license reserves its rights under applicable law to decline to license or continue to license another Member (including its Affiliates) or a third-party that has commenced or threatened to commence any patent litigation against it and/or its Affiliate while such patent litigation or dispute is continuing. For the avoidance of any doubt, the license granted hereinabove does not extend to any portions of the products or systems, the purpose or function of which is not required for compliance with the Approved IPTV Specifications and does not apply to any Necessary Claims against which a Member has raised Licensing Objections pursuant to the License Review procedures set out in the Open IPTV Forum Agreement. Each Member agrees to continue discussions in good faith on the specific interpretation of Frand Terms through such Member's participation in the Steering Group. The definition of Frand Terms shall not be changed unless all Members agree to such changes in writing. 2.2 Each Member hereby grants to the other Members (including their Affiliates) a world-wide, perpetual, irrevocable, non-exclusive and royalty-free license (which may be assigned to an entity to be determined by the Steering Group by a Qualified Majority Decision), under any copyright that such Member may have to the content of the Approved IPTV Specifications, to copy, publish and distribute the Approved IPTV Specifications and to propose such Approved IPTV Specifications to standard-setting organizations pursuant to the Open IPTV Forum Agreement, solely for the purpose of the Objectives and only in accordance with the decision and direction of the Steering Group (which shall be made by a Qualified Majority Decision), and sublicense to third parties, only in accordance with the decision and direction of the Steering Group (which shall be made by a Qualified Majority Decision), the right to use such Approved IPTV Specifications solely in connection with the sublicensee's development, design, manufacture (including having manufactured on a subcontract basis), sale, use, or other disposal of hardware and/or software products compliant with the Approved IPTV Specifications, to provide the applications and other services compliant with the Approved IPTV Specifications, or to operate the telecommunications systems compatible with the Approved IPTV Specifications. The foregoing license (and sublicense) shall not include any Essential Patent(s) of such Member or Members, which shall be governed by the provisions of Sub-Clause 2.1. 2.3 Except to the extent provided in Clauses 2.1, 2.2, pursuant to the Trademark development procedures set out in the Open IPTV Forum Agreement or elsewhere in this Open IPTV Forum Agreement, the Members agree that no patent licence, immunity or other right, or any copyright, trademark, trade secret or other intellectual property right, is granted under this Agreement by any Member or its Affiliates to any other Members, their Affiliates, non-members or to the Forum, either directly or by implication, estoppel or otherwise. |