2006年6月，中国政府向世界贸易组织（WTO）提交了作为中国政府“标准化中的知识产权问题”提案（2005年5月提交WTO）背景文件（JOB（06）/176）。该文件是对前段时间我国对WTO成员澄清问题答复的综合，对标准化中知识产权问题的背景、该问题与WTO有关协定的相关性以及中国政府的相关建议做了说明。现将该提案附上，供读者参考：
JOB(06)/176 8 June 2006
BACKGROUND PAPER FOR CHINESE SUBMISSION TO WTO ON INTELLECTUAL PROPERTY RIGHT ISSUES IN STANDARDIZATION (G/TBT/W/251)
I.INCORPORATION OF INTELLECTUAL PROPERTY RIGHTS INTO TECHNICAL STANDARDS IS AN INEVITABLE OUTCOME OF THE DEVELOPMENT OF SCIENCE, TECHNOLOGY AND ECONOMY.
1.Standards reflect technology evolution. Incorporating fruits of science advances and technology innovations in standards is one distinctive feature and a trend of contemporary standardization effort worldwide. Intellectual property rights (IPRs), especially patents, are technical solutions that embody those science advances and technology innovations. Consequently, the technical solutions incorporated in standards may well coincide with those in patented technologies.
2.Nowadays, it is common practice to protect corporate R&D results through IPR regime. Patented technologies almost reach every corner of all sectors, especially high-tech ones such as information and telecommunication (ICT), where virtually all the key technologies of market significance are loaded with IPRs.
3.Implementation of all kinds of standards, be them descriptive/design or functional, may involve use of patented technologies. Even if a standard only defines the performance of a product rather than specific technical features, the implementation of the standard may still implicate IPRs, since the technical solutions to achieve the performance target can be covered by IPRs, i.e., IPRs can be indirectly included into standards that set requirements for product performance.
4.Because of the great difficulties and huge cost in retrieving, analyzing and comparing technical solution to determine its proprietary state, it’s impractical to avoid IPR in standard-setting.
5.Enterprises holding IPRs, especially essential IPRs, make significant input in worldwide standard setting activities. This is particularly true in high-tech sectors, where standardizations are often initiated and mainly advanced by those enterprises equipped with key and sophisticated proprietary technologies.
II.ISSUES REGARDING COMBINATION OF IPR AND TECHNICAL STANDARDS AND ITS IMPACT ON INTERNATIONAL TRADE.
6.WTO’s World Trade Report 2005 – Exploring the links between trade, standards and the WTO cited a research which “found a positive correlation between patent applications and new technical regulations, especially in innovative fields”. Based on a cross-country analysis, this research also found “that sectors with a higher propensity for standardization tend to be more patent-intensive and export intensive”. It is easy to foresee that there is an obvious trend of proprietary technology entering into standards.
7.Standard Development Organizations (SDOs), at international, regional and national levels, including ISO, IEC, ITU, ETSI, ANSI, etc, have neither avoided, nor can they avoid, the inclusion of patented technologies. Therefore, on the issue of incorporating patented technologies into standards, they in principle have no objection against patented items.
8.In 2005, List of IEC patent declarations received by IEC posted 27 patent-related information releases, where one release may cover a lot of patents. For instance, in the information release dated Nov. 14, 2005, Zebra Technology Company claimed 98 patents worldwide on ISO/IEC 18000-6 standard. By February 8th, 2006, ITU-T Patent Statement and Licensing Declaration Database contained 1494 patent declarations, among them 137 were received after the approval of the Recommendations. Up to 1998, ETSI posted 72 patent releases in 16 standardization sectors. By the late 1990s, over 20 companies claimed to hold about 140 patents which they construed as ‘essential' to the GSM standard.
9.Combination of IPRs with standards may be problematic and thus by have negative impact on standardization and international trade.
10.With regard to IPR declaration, patent holders may hold back patent information in the process of standard setting in the hope for unfair interests. In this regard, Dell case is illustrative.
11.Dell was a member of the Video Electronics Standards Association (VESA), a non-profit standards-setting organization representing virtually all major U.S. computer hardware and software manufacturers. When the association began setting a design standard for a computer bus design to respond to demand for faster graphics performance, all VESA members voted to approve the new VL-bus standard in 1992. As part of that approval, a Dell representative allegedly certified that he knew of no patent, trademark or copyright that the bus design would violate. In fact one year ago, Dell obtained an American patent numbered 5036481, which granted Dell exclusive right on notch outline for receiving VL-bus card on the board. Eight months after the standard was adopted, and following its widespread use in over 1.4 million computers, Dell claimed that implementing the VL-bus standard violated Dell's patent rights and requested the users to consult with Dell to determine their infringement of Dell’s exclusive right. In 1995, the Federal Trade Commission challenged Dell’s claim, alleging that Dell’s conduct unreasonably restrained competition by hindering adoption of the standard, raising the costs of adopting the standard, and by exerting a chill on legitimate standards setting activity.
12.When IPR holders refuse to license their proprietary technologies on RAND terms, standardizing efforts will confront crises. In accordance with the prevailing patent policies of SDOs, if the identified patent holders refuse to license on RAND terms and conditions, the SDOs can alter the standard around the proprietary technology. Yet it should be noted that some essential technologies are hard to avoid. If that is the case, the standard at issue may have to be withdrawn. Standard setting works have suffered, are suffering and will continue to suffer such inefficiency. As a commentator put it, “One of the most difficult areas in standards development these days is that of intellectual property rights (IPR). Internet Engineering Task Force (IETF) has seen many cases of submarine patents and other attempts to subvert the standards process. This is not just a problem for the IETF; many other standards development organizations have also had problems in this area.”.
13.In light of foregoing facts, including IPR into standards may have serious impact on the international standards setting efforts and the corresponding implementations. As TBT Agreement aims at boosting production efficiency and facilitating international trade by encouraging the adoption of international standards, such objectives can be frustrated and therefore international trade retarded. According to WTO’s World Trade Report 2005, the patent dispute on 3G standard retarded the commercialization of 3G mobile phone, which only just started at the end of 2004 while ITU approved the International Mobile Telecommunication 2000(IMT-2000) in 2000. 3G standard patent dispute litigations are still active and in high profile. Disputes of this kind will cause negative impact on 3G standard implementation, commercialization and related international trade.
III.THE INTERNATIONAL COMMUNITIES ARE PAYING MUCH ATTENTION TO IPR ISSUES IN STANDARDIZATION.
14.The impacts of IPRs on economic and trade development and the urgency to address them had been widely recognized. Related actions have been taken or are being taken.
15.The international standardization setting bodies like ISO，IEC and ITU-T have recognized the impact of IPR issues on standard setting and implementation., and have made great endeavor to solve problems related to IPR issues in standardization. They had formulated basic principles for patent disclosure and licensing arrangements, which are widely cited by other SDOs. These principles also constitute sound technical base and a roadmap for the discussion in WTO. It should also be highlighted that ISO, IEC and ITU-T have taken into consideration the development needs in their policies and activities. For example, ISO has established a specific committee (ISO/DEVCO) looking after developments dimension of international standardization activities. IEC established the Affiliate Country Programme (ACP) for developing countries in 2001. ITU-T has several Resolutions in place to bridge the standardization gap between developing and developed members.
16.Aside from the patent policies of international SDOs, United Nation Center for Trade Facilitation and Electronic Business (UNCEFACT) is also well aware of this issue in its standardization work and begins to formulate its patent policy for standards on electronic commerce. In some developed countries, these issues have captured the regulators’ attention. In Japan, the Guidelines for Patent and Know-how Licensing Agreements under the Antimonopoly Act implemented by Japan Fair Trade Commission, stipulated that the patent holders whose patents implicated by standards adopted by government agencies shall not use their patents to exclude or control other companies, including exclusion and/or control of commercial activities of the patent users.
17.In U.S., the Federal Trade Commission (FTC) and Department of Justice (DOJ) had been conducting intense discussions on these issues, including those on “Intellectual Property Strategies in Standards Activities”, “Licensing Terms in Standards Activities” at the FTC/DOJ joint Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy in 2002. In EU, EC Communication on Intellectual Property Rights and Standardization （COM (92) 445 final, 1992）recognized that IPR holders should “make best efforts to identify any IPR which they hold relevant to a standard under development and to confirm or refuse permission for its incorporation in the standard”; “Offer fair, reasonable and non-discriminatory monetary or non-monetary terms for the license to use IPR”; and “Treat their eventual agreement for incorporating an IPR in a standard as irrevocable.” In September 2005, Mr. Ryutaro Matsumoto, Japanese Industrial Standards Committee (JISC) Secretary General and Director General of METI sent a letter to ISO and IEC urging ISO and IEC to establish the IPR ad hoc group so that member countries can participate in the discussions on the IPR issues and to clarify the operation of their patent policies.
IV.TO STRIKE BALANCE BETWEEN IPR HOLDERS AND STANDARD IMPLEMENTERS FOR A WIN-WIN SITUATION.
18.The discussion on IPR issues in Standardization does not mean that IPR holders will lose and the IPR users will gain. The real problem stands now is that there are no sufficient rules to respond to IPR issues in standardization within international community, including WTO framework. Without well-defined rule to follow, inefficiency arises and disputes result to the detriments of both IPR holders and IPR users, who come from both developing and developed Members. While it is important to protect the rights and interests of IPR holders, it’s equally significant that new international standards and advanced IPR technologies are applied as widely as possible in order to enhance efficient, high quality production and to facilitate world trade to the interests of consumers worldwide. If there is a rule of balance that sufficiently clear to follow, the application of new international standard and new advanced IPR technologies will be smooth, and benefits will accrue to IPR holders--more users, more profit.
V.RELEVANCE OF THE IPR ISSUES IN STANDARDIZATION WITH THE WTO TBT AGREEMENT
19.Article 2.4 of the TBT Agreement encourages WTO Members to adopt international standards as the basis of the standards and technical regulations. If Members are not clear of IPRs in the relevant international standard, whether all the IPRs have been disclosed, under what terms the IPRs are to be licensed by the IPR holders, all WTO Members will face difficulties when adopting international standards. In the case that the national technical regulations are adopted, the enterprises who are subject to implementation of the technical regulations will encounter great difficulties with relation to disclosure of IPRs in standards and hard and time-consuming negotiations with IPR holders on the terms of licensing. Either the IPR holders are domestic or foreign companies, every Member will have to face this problem, which actually is the problem between the IPR holders and IPR users.
20.From the governmental level, as well as the company level, there exists the kind of unwillingness of adopting international standards as the basis of their national standards and technical regulations if there is no common rule to regulate IPRs in standardization. Such a situation will bring negative impact on implementation of TBT Agreement with relation to adoption of international standards while this Committee encourages Members to adopt international standards to their maximum extent. With a view to facilitating the setting and implementation of international standards, therefore the smooth implementation of the TBT Agreement, IPR issues in standardization must be addressed properly.
21.China proposes that international standard setting bodies, as well as Members, provide the Committee with relevant information regarding practices and experience on their IPR policies in standardization for Members’ understanding and reference. Information exchange will be helpful and necessary to facilitate meaningful discussions.
22.The discussion on IPR issues in standardization is of great significance to the integrity of international standardization community and multilateral trade system. China is of the belief that this issue should be carried forward within WTO. China will continue to make her constructive contributions in this regard.
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