SIST-V CEN/CLC Guide 8:2010

SLOVENSKI STANDARD
SIST-V CEN/CLC Guide 8:2010
01-marec-2010
Vodila CEN/CENELEC za izvajanje skupne politike IPR (patenti in druge zakonske
pravice iz naslova intelektualne lastnine, ki temelji na izumih)
CEN-CENELEC Guidelines for Implementation of the Common IPR Policy (Patents and
other statutory intellectual property rights based on inventions)
Ta slovenski standard je istoveten z: CEN/CLC Guide 8:2010
ICS:
03.140 Patenti. Intelektualna lastnina Patents. Intellectual property
SIST-V CEN/CLC Guide 8:2010 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 8:2010

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SIST-V CEN/CLC Guide 8:2010












CEN/CENELEC Guide 8



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




















CEN and CENELEC decided to adopt this new CEN-CENELEC Guide 8 with CENELEC General Assembly decision of
26 October 2009 and CEN General Assembly Resolution of 15 November 2009.

Edition 2 / January 2010

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SIST-V CEN/CLC Guide 8:2010










European Committee for European Committee for
Standardization Electrotechnical
Standardization

Avenue Marnixlaan 17
B – 1000 Brussels

Tel: +32 2 550 08 11 Tel: +32 2 519 68 71
Fax: +32 2 550 08 19 Fax: +32 2 519 69 19

www.cen.eu www.cenelec.eu

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SIST-V CEN/CLC Guide 8:2010

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

CEN-CENELEC Guidelines for Implementation of the
Common IPR Policy (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 the 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 normally not 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.
The Guidelines for Implementation of the Common IPR Policy for CEN/CENELEC
(hereafter referred to as the “Guidelines”) are intended to clarify and facilitate
implementation of the Patent Policy, a copy of which can be found in Annex 1 and also on
the websites of both Organizations.
The Patent Policy encourages the early disclosure and identification of patents that may
relate to Deliverables under development. In doing so, greater efficiency in standards
development is possible and potential patent rights problems can be avoided.
CEN and CENELEC should not be involved in evaluating patent relevance or essentiality
with regard to Deliverables, interfere with licensing negotiations, or engage in settling
disputes on patents; this should be left – as in the past – to the parties concerned.
2 Terms and definitions
For the purposes of this Guide, the following terms and definitions apply:
2.1
contribution
any document submitted for consideration by a technical body


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

2.2
Declaration Form
the “Statement and Licensing Declaration for CEN and CENELEC Deliverable” attached
as Annex 2
2.3
Deliverable
CEN deliverables and/or CENELEC deliverables
2.4
free of charge
The words “free of charge” do not mean that the Patent Holder is waiving all of its rights
with respect to the essential patent. Rather, “free of charge” 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.
2.5
Organization(s)
CEN and/or CENELEC
2.6
patent
refers to essential patents or similar rights, utility models and other statutory rights based
on inventions, including any applications for any of the foregoing
2.7
Patent Holder
person or entity that owns, controls and/or has the ability to license patents
2.8
reciprocity
As used herein, the word “reciprocity” means that the Patent Holder shall only be required
to license any prospective licensee if such prospective licensee will commit to license 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
2.9
technical body
Technical Committees, Subcommittees, Working Groups, Workshops and other groups in
CEN and CENELEC
3 Patent disclosure
As mandated by the Patent Policy in its first paragraph, any party participating in the work
of the Organizations shall, from the outset, draw their attention to any known patent or to
any known pending patent application, either their own or of other organizations.


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

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. This 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. Moreover, that information 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 the Organizations to any known patent, either their own and/or of any third
party.
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
the concerned Organization(s) in writing. The potential Patent Holder will then be
requested by the relevant Organization(s) to submit a Declaration Form.
The Patent Policy and these Guidelines also apply to any patent disclosed or drawn to the
attention of the Organizations subsequent to the approval of a Deliverable.
Whether the identification of the 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 Organizations 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
Patents and other statutory Intellectual Property Rights based on inventions
4.1 Purpose of the Declaration Form
To provide clear information in the Patent Information databases of each Organization,
Patent Holders shall use the CEN-CENELEC Declaration Form, which is available on the
website of each Organization (the Declaration Form is included in Annex 2 for information
purposes). They must be sent to the attention of the Technical Directors of CEN and/or
CENELEC.
The purpose of the Declaration Form is to ensure a standardized submission to the
respective Organizations of the declarations being made by Patent Holders and, most
importantly, in case the Patent Holder declares his/her 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 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.


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(Patents and other statutory intellectual property rights based on inventions)

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
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.
4.2 Contact 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 organizations, 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 Organization, it is requested that the Organizations be informed of any change or
corrections to the Declaration Form submitted in the past, especially with regard to the
contact person.
5 Conduct of meetings
Early disclosure of patents contributes to the efficiency of the process by which
Deliverables are established. Therefore, each technical body, in the course of the
development of a proposed Deliverable, will request the disclosure of any known patents
essential to the proposed Deliverable.
Chairmen of technical bodies will, if appropriate, ask, at an appropriate time in each
meeting, whether anyone has knowledge of 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.
As long as the Organization concerned has received no indication of a Patent Holder
selecting Paragraph 2.3 of the Patent Policy, the Deliverable may be approved using the
appropriate and respective rules of the Organization concerned. It is expected that
discussions in technical bodies will include consideration of including patented material in
a Deliverable, however the technical bodies may not take position regarding the
essentiality, scope, validity or specific licensing terms of any claimed patents.
6 Patent Information databases
In order to facilitate both the standards-making process and the application of
Deliverables, each Organization makes available to the public a Patent Information
database composed of information that was communicated to the Organizations by the
means of Declaration Forms. The Patent Information database may contain information
on specific patents, or may contain no such information but rather a statement about
compliance with the Patent Policy for a particular Deliverable.


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SIST-V CEN/CLC Guide 8:2010

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

The Patent Information databases are not certified to be either accurate or complete, but
only reflect the information that has been communicated to the Organizations. As such,
the Patent Information d
...