SIST-V CEN/CLC Guide 8:2019

SLOVENSKI STANDARD
SIST-V CEN/CLC Guide 8:2019
01-julij-2019
Smernice CEN/CENELEC za izvajanje skupne politike na področju patentov (in
drugih zakonsko določenih pravic intelektualne lastnine, ki temeljijo na izumih)
CEN-CENELEC Guidelines for Implementation of the Common Policy on Patents (and
other statutory intellectual property rights based on inventions)
Ta slovenski standard je istoveten z: CEN/CLC Guide 8:2019
ICS:
03.140 Patenti. Intelektualna lastnina Patents. Intellectual property
SIST-V CEN/CLC Guide 8:2019 en,fr,de
2003-01.Slovenski inštitut za standardizacijo. Razmnoževanje celote ali delov tega standarda ni dovoljeno.

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SIST-V CEN/CLC Guide 8:2019










CEN-CENELEC
GUIDE
8


CEN-CENELEC Guidelines
for Implementation of the
Common Policy on Patents
(and other statutory intellectual
property rights based on inventions)


Edition 2, 2019-05
(Supersedes CEN-CENELEC Guide 8:2015)













CEN and CENELEC decided by correspondence to adopt this revised CEN-CENELEC Guide 8 on 2019-04-28 with
CEN/AG Resolution 03/2019 and CENELEC/AG Decision AG59/C10.

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European Committee for Standardization
Tel: +32 2 550 08 11
Fax: +32 2 550 08 19
European Committee for Electrotechnical Standardization
Tel: +32 2 519 68 71
Fax: +32 2 550 08 19
Rue de la Science 23

1040 Brussels – Belgium

www.cen.eu
www.cenelec.eu
www.cencenelec.eu

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CEN-CENELEC Guide 8:2019


Contents Page
1 Purpose . 4
2 Terms and definitions . 4
3 Essential patent disclosure . 6
4 Statement and Licensing Declaration for CEN and CENELEC Deliverable of
Essential Patents and other statutory Intellectual Property Rights based on
inventions . 6
4.1 Purpose of the Declaration Form . 6
4.2 Relevant information . 7
5 Conduct of meetings and duties of Chairs . 8
6 Patent Information list . 8
7 Specific provisions . 8
7.1 Consultations on draft Deliverables . 8
7.2 Notification . 8
7.3 Irrevocable licensing declarations on Essential Patent and transfer of
ownership to third parties . 9
7.4 Multiple patents declared . 9
Annex 1.11
Annex 2.13
Annex 3.16



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CEN-CENELEC Guide 8:2019
CEN-CENELEC Guidelines for Implementation of the
Common Policy on Patents (and other statutory
intellectual property rights based on inventions)

"Rules for Mariners caught on a lee shore:
Rule 1. Don't get caught on a lee shore!"
English Seamen's Manual, 18th century

1 Purpose
CEN and CENELEC have had an intellectual property rights (IPR) policy for many years
under the provision of the CEN-CENELEC Guide 8 “Standardization and intellectual
property rights (IPR)”; the purpose of these common guidelines is to provide in simple
words practical guidance to the participants in their technical bodies in case patent or
other intellectual property rights matters arise.
For the sake of clarity this document refers to “patents”, as most - but not all - IPR issues
that CEN and CENELEC technical bodies have to deal with concern patent rights.
However, the same implementation principles shall apply to other statutory intellectual
property rights based on inventions that may arise, such as utility models or registered
semiconductor topographies (see Clause 2, Terms and definitions).
Considering that technical experts are not normally familiar with the complex issue of
patent law, the Common Patent Policy for ISO/IEC/ITU endorsed by CEN and CENELEC
(hereafter referred to as the “Patent Policy”) was drafted in its operative part as a checklist
covering the three different cases which may arise if a deliverable requires licences for
patents to be practiced or implemented, fully or partly.
These Guidelines for Implementation of the Common Policy on Patents for CEN and
CENELEC (hereafter referred to as the “Guidelines”) are intended to complement, clarify
and facilitate the implementation of the Patent Policy, a copy of which can be found in
Annex 1 and also on the websites of both organisations.
The CEN and CENELEC Patent Policy requests stakeholders participating in technical
Committees, and in particular patent holders, to proceed to early disclosures and
identification of patents that may be considered, at the best of their knowledge, to be
essential for the future use of the deliverables under development. In doing so, greater
efficiency in standards development is possible and potential patent rights problems can
be avoided.
CEN and CENELEC are not involved in evaluating patent relevance or essentiality with
regard to deliverables, nor to interfere with licensing negotiations, or engage in settling
disputes on patents. This is left to the parties concerned.
2 Terms and definitions
For the purposes of this Guide, the following terms and definitions apply:


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2.1
contribution
document submitted for consideration by a technical body
2.2
declaration Form
“Statement and Licensing Declaration for a CEN and CENELEC Deliverable” attached as
Annex 2
2.3
deliverable
CEN and/or CENELEC technical publication
2.4
patent
temporary, limited legal right granted to an inventor by public authorities to prevent others
from manufacturing, selling or otherwise dispose utility models and other statutory rights
based on her/his invention, including any applications for any of the foregoing

2.5
patent holder
person or entity that owns, controls and/or has the ability to license Patents
2.6
essential patent
patent considered, for the purpose of making a patent declaration to CEN and CENELEC,
by the patent holder as 'essential' when, in her/his own judgment, it is not possible on
technical grounds, considering the state of the art at the time the standardisation-making
process takes place, to make, sell, lease and otherwise dispose an equipment, product or
method which comply with a deliverable without infringing her/his IPR on that Patent.

2.7
organisation(s)
CEN and/or CENELEC
2.8
free of charge
as used herein, without due payment to the patent holder as part of the licensing
arrangement for the purpose of making a patent declaration to CEN and CENELEC
2.9
reciprocity
as used herein, requirement for the patent holder to give a license to any prospective
licensee only if such prospective licensee will commit to license, where applicable, its
essential patent(s) or essential patent claim(s) for implementation of the same above
document free of charge or under reasonable terms and conditions
2.10
technical bodies
Technical Committees, Subcommittees, Working Groups, Workshops and other groups in
CEN and CENELEC


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2.11
FRAND
Fair, Reasonable And Non-Discriminatory conditions
3 Essential patent disclosure
Any party participating in the work of CEN and CENELEC is requested, from the outset
and at the best of her/his knowledge, to draw attention to any known patent or to any
known pending application on patent, either their own or of other organisations that,
according to her/his own judgment, may be considered as an essential patent for the
deliverable.
In this context, the words “from the outset” imply that such information should be disclosed
as early as possible during the development of the deliverable. It is understood that
disclosure might not be possible when the first draft text appears since, at this time, the
text might be still too vague or subject to subsequent major modifications.
Information on essential patents should be provided in good faith and on a best effort
basis, but there is no requirement for patent searches.
In addition to the above, any party not participating in technical bodies may draw the
attention of both organisations to any known patent, either their own and/or of any third
party that may be considered as essential for the deliverable.
When disclosing their own patents, patent holders shall use the declaration form as stated
in Clause 4 of these Guidelines.
Any communication drawing the attention to any third-party patent shall be addressed to
CEN or CENELEC in writing. The potential patent holder will then be requested by the
relevant organisation to submit a declaration form.
The Patent Policy and these Guidelines also apply to any Patent disclosed or drawn to the
attention of CEN and CENELEC subsequent to the approval of a deliverable.
Whether the identification of the essential patent took place before or after the approval of
the deliverable, if the patent holder is unwilling to license under Paragraph 2.1 or 2.2 of
the Patent Policy, the concerned organisation shall promptly advise the technical bodies
responsible for the affected deliverable so that appropriate action can be taken. Such
action shall include, but may not be limited to, a review of the deliverable or its draft in
order to remove the potential conflict or to further examine and clarify the technical
considerations causing the conflict.
4 Statement and Licensing Declaration for CEN and CENELEC Deliverable of
Essential Patents and other statutory Intellectual Property Rights based on
inventions
4.1 Purpose of the Declaration Form
Patent holders shall use the CEN-CENELEC Declaration Form to provide the necessary
information to be included in the CEN and CENELEC Patent Information databases. The
CEN-CENELEC Declaration Form is available on the website of each organisation (the
Declaration Form is included in Annex 2 for information purposes). Declaration Forms
must be sent to the attention of the Director Standards of the CEN-CENELEC
Management Centre.


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The purpose of the Declaration Form is to ensure a standardised submission to CEN and
CENELEC of the declarations being made by patent holders and, most importantly, in
case the patent holder declares her/his unwillingness to license under option 1 or 2 of the
Declaration Form (i.e. declares option 3 of the Declaration Form) to provide the supporting
information and an explanation, as strongly desired by CEN and CENELEC.
The Declaration Form gives patent holders the means of making a licensing declaration
relating to rights in the essential patents required for implementation of a specific
deliverable. Specifically, by submitting this Declaration Form, the submitting party
declares its willingness/unwillingness to license the patents held by it and whose licence
would be required to practice or implement part(s) or all of a specific deliverable, in
accordance with the Patent Policy.
The statement contained in the Declaration Form remains in force as long as it has not
been replaced, e.g. in case of obvious errors.
Multiple Declaration Forms are appropriate if the patent holder has identified several
essential patents and classifies them in different options of the Declaration Form and/or if
the patent holder classifies different claims of a complex patent in different options of the
Declaration Form.
The words “free of charge” in the Declaration Form do not mean that the patent holder is
waiving all of its rights with respect to the essential patent. Rather, it refers to the issue of
monetary compensation; i.e. that the patent holder will not seek any monetary
compensation as part of the licensing arrangement (whether such compensation is called
a royalty, a one-time licensing fee, etc.). However, while the patent holder in this situation
is committing to not charging any monetary amount, the patent holder is still entitled to
require that the implementer of the above document sign a licence agreement that
contains other reasonable terms and conditions such as those relating to governing law,
field of use, reciprocity, warranties, etc.
4.2 Relevant information
In completing Declaration Forms, attention should be given to supplying contact
information that will remain valid over time. Where possible, the “Name and Department”
and e-mail address should be generic. Also it is preferable, where possible, that parties,
particularly multinational organisations, indicate the same contact point on all Declaration
Forms submitted.
With a view to maintaining up-to-date information in the patent information database of
each organisation, the patent holder is requested to inform the CEN-CENELEC
Management Centre of any change or corrections to the content of the information
provided in the Declaration Form submitted in the past, especially with regard to the
contact person, or information that may be relevant for the purpose of the Declaration
e.g. in case the relevant patent application has been granted or rejected, or information
regarding changes to the legal status of the relevant patent application or patent.
Any other party that may have relevant updated information on the list of the patent
database, is also invited to inform the CEN-CENELEC Management Centre.



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5 Conduct of meetings and duties of Chairs
Early disclosure of essential patents contributes to the efficiency of the process by which
deliverables are established. Therefore, in the course of the development of a deliverable,
technical experts participating in the technical body are requested to inform about - or to
disclosure if relevant - any patent that, according to their own judgment, may be
considered as an essential patent for the proposed deliverable. Technical experts are
deemed to provide such information on any known essential patents in good faith and at
the best of their knowledge.
In particular, the Chair of technical bodies will ask, at an appropriate time in each meeting,
whether anyone has knowledge of essential patents, the use of which may be required to
practice or implement the deliverable being considered. The fact that the question was
asked shall be recorded in the meeting report, along with any affirmative responses.
Provided the patent holder(s) is prepared to grant licences on “free of charge” or “FRAND”
condition on those essential patent that are included in the draft deliverable, the latter can
be processed for final approval. In any event, it is expected that discussions in the
technical bodies also include considerations on possible patented material in a
deliverable. However, it is important to underline that the technical bodies may not take
position regarding the scope, validity or specific licensing terms of any claimed essential
patents.
6 Patent Information list
In order to facilitate both the standards-making process and the implementation of
deliverables, CEN and CENELEC make available to the public a common Patent
Information list composed of the information that was communicated to the organisations
by the means of Declaration Forms. The Patent Information list may contain information
on specific patents, or may contain information about compliance with the Patent Policy
for a particular deliverable.
The common Patent Information list is not certified to be either accurate or complete, but it
only reflects the information that has been communicated to the organisations.
As such, the Patent Information list is to be viewed as simply raising a flag to alert
standard users that they may wish to contact the entities who have communicated
Declaration Forms to CEN and CENELEC in order to determine if patent licences must be
obtained for use or implementation of a particular deliverable.
7 Specific provisions
7.1 Consultations on draft Deliverables
All drafts submitted for comment shall include on the cover page the following text:
“Recipients of this draft a
...