Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 847

Administrative Motion to File Under Seal Samsung's Opposition to Apple's Motion for Partial Summary Judgment filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Trac Declaration in Support of Motion to File Under Seal, #2 Samsung's Opposition to Apple's Motion for Partial Summary Judgment, #3 Hecht Declaration in Support of Opposition to Motion for Partial Summary Judgment, #4 Ex A, #5 Ex B1, #6 Ex B2, #7 Ex C1, #8 Ex C2, #9 Ex D, #10 Ex E, #11 Ex F1, #12 Ex F2, #13 Ex F3, #14 Ex F4, #15 Ex G, #16 Ex H, #17 Ex I, #18 Ex J1, #19 Ex J2, #20 Ex J3, #21 Ex J4, #22 Ex J5, #23 Ex J6, #24 Ex J7, #25 Ex J8, #26 Ex J9, #27 Ex J10, #28 Ex J11, #29 Ex K1, #30 Ex K2, #31 Ex K3, #32 Ex L, #33 Ex M, #34 Ex N, #35 Ex O1, #36 Ex O2, #37 Ex P1, #38 Ex P2, #39 Ex Q1, #40 Ex Q2, #41 Ex Q3, #42 Ex Q4, #43 Ex Q5, #44 Ex Q6, #45 Ex Q7, #46 Ex R, #47 Ex S1, #48 Ex S2, #49 Rosenbrock Declaration in Support of Opposition to Motion for Partial Summary Judgment, #50 Ex 1, #51 Ex 2, #52 Ex 3, #53 Ex 4, #54 Ex 5, #55 Ex 6, #56 Ex 7, #57 Ex 8, #58 Ex 9, #59 Ex 10, #60 Ex 11, #61 Ex 12, #62 Ex 13, #63 Ex 14, #64 Ex 15, #65 Ex 16, #66 Ex 17, #67 Ex 18, #68 Proposed Order Denying Apple's Motion for Summary Judgment, #69 Proposed Order Granting Samsung's Administrative Motion to File Under Seal)(Maroulis, Victoria) (Filed on 4/2/2012) Modified on 4/3/2012 Attachment #1 Trac Declaration placed under seal. Posting of attachments #16, 18, 19, 20 through 33, 37, 38, 47 and 48 are NOT in compliance with General Order 62 (dhm, COURT STAFF).

EXHIBIT 8

European Telecommunications Standards Institute

ETSI

9th General Assembly
Nice, 20-21 November 1990

ETSI/GA 9 (90) 9

Date:

16 November 1990

Source:

IPRC Chairman

Title:

Intellectual Property Policy and Prodecures

Document for:

Information and Discussion

Note from the ETSI Secretariat:
The attached document, which is a contribution from Mr. R. Nicholson, IPRC Chairman, is an
amended version of the document submitted to the 7th Technical Assembly under the reference

TA 7 (90) 31.

D/524/90/DG/skw

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S-ITC-003390461

¢~23 5N2

F~ESSAGE

TO: Prof Sagliardi
Director
15 November 1990

SUSJECT: £TH eENERAn ASSE~BLEY
IP POLler ~D P£--dCEDURES
Please find enclosed a copy of the subi~ect document for submission to GA9 as
my contribution÷
It is my opinion that apart from the following matters, this paper would be
generally acceptable to the majority of the IPRC:~
a~

b~

C~

d~

It is considered that the arbitration provisions should be deleted
because disputes between members are a matter for the members. It
was concluded that essentiality is a matter for ETSI and not an
arbitrator. Thus any disputes concerning essentiality should be
settled by ETSi and the members concerned. Since decisions are
only binding on the parties to the arbitration, different decisions
may therefore arise concerning the essentiality of the same IPR.
The manufacturers are concerned that operators will use their
purchasing power to obtain licences in respect of non-essentia! IPR
and have suggested the inclusion of a clause to prevent this (ie
clause 5.!0 of the IPR Undertaking). The operators on the other
hand feel that ETSI should only concern itself with essential
statutory iPRs because the principle provisions o£ the agreement
only relate to such IPRs and are of the opinion that clause 6.10
should be limited to essential statutory IPRs.
The extent to which the licence~.~anbe extended to allow the
operator to use outside the territory equipment manufactured under
licence in the territory, is still a contentious issue. The
operators have stated that a viable off-set for this would be the
freedom for manufacturers to manufacture components, sub-systems or
the like outsi@e the territory.

The territorial extent of, a~d the consideration for, the licences
are still areas o£ dispute.

With kind personal regards
rs sincerely

~
EUROPEAN TEL?$QMM~jNICATIONS STANDARDS INSTITIJT~
Ifl,..qT]]UT EIJROP~EN 0[~ NORMES DE T~LECOMMUNICATiON
~UROPAI,SGHES INS""~Tu’T FO~ TELEKOMMLJNIKATION$,~TANOARDS
Postal add~e.s$ t ETa! ’B. P. 152.- F-055’61 "i&lbot~,ne C_..,e(J#× FRANCE
O~[ce :~,","J~ress t Route des LuCi0!e~ SophiaoA,qt~po’~, V~;b0nne ,FRAt4C~

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7e]. : + 3392 94 42. OC,
’Teief~ : 4. 3.3 93 55 47 !.~
÷ 33 93 65 28 !7
T61eX ; ~.70 [.)40 F
S~RET ~ 348 653 5~2 0001.

S-ITC-O03390462

Amended Version 2

Amended 15.11.90

4302s

I~AL~~7 POLIC~

-1-

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S-ITC-003390463

4302s

I~TRODOCTZq

ii

I.i

Tae General Esse~bly has recognined that the generation of European
Telecomaunications 8taadards (ETSs) may give rise to intellectual
property problems and has, ~erefore, esta~llshed an Intellectual
Property Rights Oommittee (IPRC) to advise ETSI and its members.

1.2

The IPRC has formulated an Zntsll~ual Property Policy (IPP) for
the benefit of ETSI members and ImgBo-mlbillty for the operation of

this policy is vested i~ the IF%~C.
The IPRC shall be responsible for r~zcamendlng changes to the
policy pursuant to cha.ge in the legal and commercial environment
for ratification by the General ~Sambly.
POLZC~ OBJECTIVES

In pursuance of Article 2 a/ld 3 of the E2SZ S%atutes, the main policy
objectives Of ETSI in relation to IPRs are to ensure that.
2.1

2.2

ETSs shall be based on sol~tions ~ich meet the stated technical
objectives but a draft BTS s~Kll not be adopted if it is subject to
any IPRs for which licenc~ are considered by ETSI to be needed but
are not available, on fair,~ reasonable, and non-discriminatory
te~s told which’lIE~n~es" ~’%~e~x’~otality are non-prohibitive;

2.3

the investment made ~ ETS~ ~a~ers anti their affiliates in
research and development, u~ilised in the establistment of ETSs,
shall be adequate!y and £alr~y rewarded.

2.4

m

intellectual property righ%s(ZPRs) eo not ~nreasonably hinder the
manufacture, sale, supply o ruse o~sys%e~s, equipmemt or services
in compliance with ETSs;

all ETSI me~ers have real access to telecommunications markets,
equivalent to that of j!tdigenmls commercial enterprises, in all
countries adopting and implementing ETS~.

IPR UNDERTAKINGS
S.I

As a condition of being, or~ontln~ing to be, a member of ETSI, all
members must ~rovide an IFR %tudertaking in the form shown in
Appendix "A" zncluding its Annexes whicll is an integral part of
this Policy. This IPR ~nderemking is intendea to ensure that IPRs
are not employed unreasonably to prevent the adoption of an ETS by
ETSX, an~ that ETSI members can cooperate freely an~ without risk
in achieving ETSI’s stated objectives and in the develo~ent of
co~mon ETSs.

3.2

The I~R undertaking referre~ to in paragraph 3.1 above shall, on
signature, apply to all ETSZ standards and supersede any previous
undertaking given to ETSI relating to standards for which ETSI is
responsible.

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3.3

Members of ETS~ shall sign the ~ndertaking referred to in paragraph
3.1 above wi~hln 6 months of a request in writing from ETSI so to
do.

The proceedings of a Technical Committee (TC) Qr Sub-Commlttee (STC) or
any part thereof shall be regarded as non-confldential except as
expressly provided below and all information st~zitted to a (TC) or (STC)
shall be treated as if in the public domain and shall De available for
p%blic inspection unless it i8 identified i~ writing by the originator as
confidential at the Sate of submisslon. Proceedings of a TC or STC which
relate to confidential informatioll disclosed to the STC or TC shall if
minuted to t3at efEect be regarded as confidential themselves.
o

OWNERSHIP 0F IPRs
5.1

Subject to paragraph 5.2 below, BTSI shail not seek to own IP~s
other than those generated by its employees or by secondees to ETSI
from non-commerclal or~anisations, such as universities.

S.2

The o, nership of t~e copyright subsisting in standards
documentation and reports created by TCS or STCs shall vest in ETS!
but due acknowledgement shall be given to copyrights owned by third
parties that are ideatifSable in ETSI ¢opyrighte~ works.

5.3

Subject to para91-aph 5.4 below, enforcement of IPRe owned by ETSI
shall be at the discretion of the IPRC and subject to the approval
of the General Assembly.

5.4

Except as provldaa ~u para~aph 5.2 above IFRs owned by ETSI shall
De made available, as of riSht and free of charge, to ETSI members
bY way of a licence.

5.5

ETSI shall, subject to any o~ligation of confidentiality, permit
its M~BER$ and their affiliates to reproduce its technical reports
and standards specificatlons whether in draft or final form for
their own internal ~e.

5o5

ETSI shall, subject to any obligation o£ confidentiality,
distribute unofficial ETSI dDculents only to MEKBERS and their
affillates, observers, an~ countellors.

5.7

ETSI my conclude agreements with governmental ~dies, public

telecommunications operators, industrial associations,
teleco~municatlons users associations, and ~ational or regional
standards bodies pursuant to which ETSs, draft ETSs, I-ETSs, and
ETS~ technical reports may be supplie~ to such bo4ies under
conditions of confidence or otherwise.
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S-ITC-003390465

In accordance with paragraph 2.1 of the PolicT, llcances granted pursuant
to the IPR Undertakin~ shall be an fair, reasonable and
non-discrlmlnatory terms.
It is recommended that llcances 9zanted pursuant to the IPR Undertakings
should De in the form annexe~ to,he ~ndertaking set out in Appendix "A"
attached hereto.

Licensors of essential intellectual propertl rights, who are signatories
of the ~ndertaking referred to lnlparagrapI~ 3.1, shall in setting royalty
rates take into account that the~xlm~cumulative royalty due in
respect of essential IPRs for a particular product or method shall not
exceed a predetermined level set by BTSI in accordance with its Rules of
Pr~edure, above which level the cumulative royalty is deemed to be
prohibitive, that is to say to have the effeut of preventing licensees
from conercimlising such produ~or aet~od. 3TSI shall determine the
level of the maximum cumulative royalty applicable to such ETS, taking
into account normally accepted maximum royalty rates for the type of
equipment an~/or me~hods in the f~el8 of the ETS a~d consisteat with
pr~iding a fair reward for II~ based on R and D necessary for creating
the technology underlying the ETS.
m

PROCEDURES

7.1

:.

,

Zn order to facilitate the pSovisi~U of advice on IFR matters to
the TCs and/or the STCs, the IPRC will have a Sub-Committee for

each of the TCs and each of~hese $ub-Commlttees will:

be
will be responsible
Ca)Totchaired by a eeaber.of the IPRC who to wh~Chhis
iiaising with the Chairman Of ~he TC
Sub-~mmittee has bean assigned.

have a modus operandi deteFaine4 by the IPRC which will
ratify and have final responsibility for any actions taken
and/or advlcs glvenl~f~he Sub~mmlttees.
(C) ¯ make a llst of essential IFRs .hich might obstruct ETSs, and
will pass copies of su~ list on a confidential basis to all
~TS~ ~em~ers ....
7.2

ETSI members who disclose information to TCs or STCs shall bear the
sole responsibility for taking appropriate measures ~or securing
the IPRs they desire in relation to such information prior to
disclosure.

7.3

Any document su~nitte4 to a TC or STC containing information which
the originator regards as confidential shall be clearly marked as
such and any oral statement made to a TC or STC which is regarded
as confidential must be identified before disclosure in
non-confidential ter~s aad re~ord@~ in the miautes in such terms.
ETS7 members who are procurers an~ vendors of equipment specified
by reference to an ETS shall equitably share their risks associate~
with infringement of essentia! IFRs which are unidentifie~ prior to
the ~ate on which a procurement contract price is binding on the
vendor.

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7.5

ETS[ shall, to the extel%t t~at it ~ able, ensure its m~J~ers ca~
obtain licences on fair, reasonable and non-discriminatory terms
pursuant to essential IPRs, Im particular third party essential
IPRS. If a me~ber of ETS2 is ~%able to obtain a licence on fair,
reasonable a!%d non-discria!natory ter~s pursuant to an ZPR which is
essential to a standard, ETSI shall take i~mediate steps to ~>dify
the standard so that such IPR is no longer essential or shall
withdraw the standard.

,~, ~ISPUTBS_
In the event of a dinlmte or difference between t/~e SIGHATORY, and

a signatory of an eq~ivaleat tmeertaking mutatis mut~Idis arising
o~t of or in connection with the UNDERT~/~NG, its interpretation,
or application, the parties to the dispute shall first use their
best endeavours to settle thQ displte or dif~ere£ce amicably within
a period of 3 months after one party has announced in writing to
the other that there exists a~ dispute or difference.
8.2

all disputes or differences whlch carmot he settled as provided for
in clause 8.1 above shaZl be finally settled by ad hoc arbitration
by three arbitrators. One arbitrator shall be appointed by each
party to the dispute, and the third arbitrator, who shall act as
Chaira~n, shall be appointed by the two first appointed
arbitrators. If the firgt ppoi~ted a~bitrators fail to agree
two a
upon the third arbitrator wi~
6 W~J~s of the appointment of the
second o~ the first two arbitrators, the thir6 arbitrator shall be
appointed by the Director of ~T$1. The Chairman of the arbltratio~
panel shall have proven axperiQace in the issues in dispute.

8.3

The arbitrators e~]! follow tAe n~"of conciliiation an--d’
arbitration of the %~ternatio~%l .Chamber of Commerce in its edition

current at the time o~ arbitratlon without involving the
International Chamber of commerce in administrative matters.

8.4

If there be more ~21an o~e part~ on one, or on both sides, all
parties being o~ one side shall ac~ ~ointly and unanimously as a

8.5

single party for the appointae~t of arbitrators and a~y other
actlv~ties in the course of arbitration.
The arbltr~tors shall use thei~ best efforts to give their final
Judgement ~ot later tha~ s~x ~onths ITom the date on which the
third arbitrator has been appoiuted.

8.6

Unless otherwise agreed, arbitrators shall have their meetings and
hearings in Sophia-A~tlpolis, France.

8.7

The award of the arbitrators shall be final and binding upon the
disput i~g parties.

8.8

Issues of IPR infringement and validity shall not be decided b~ the
arbitrators, however decisions relating to the ESSENTYALITY of an
~PR ~y be made, as between the Iklrtles, by arbitration and shall
be ~ade available by the parties to ~TS~ ~or distribution to all
members together with the reasons for ~he arbitrator’s ~eclsion.

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If and as long as the SISNATORY is not permitted by law to be a
par%y to arbit;ation and a ~ispu~e arises out o£ this Policy which
involves the SIGNATORY, the~ suc, h dlsp~te shall be submitted to the
jurisdiction of a competent court.
8.10 The costs of arDitratlon shall be Dome ~ the parties thereto and
appo~tloned as the arbitrators shall dlr~-t.
gQ

LAW AND ~TION

This policy shall al~ays be opera%ee in a manner which complies with the
law and r~tion of the countries in which BTSI members are resident,
and where appropriate with the law and requlation of the Buropean
Econoaic Community or the Europea~ Free Trade Association.
io. PENALTIES
Any ~)~’e.ach of this policy by an ETSI member shall be deemed to be a
breach, bythat member, of the ETSI Statutes.

"’6 m

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APPENDIX A

This undertaking is given this ....... day of .......... by ...... ...

(hereinafter referred to as the SIGNATORY.) who~e registered office is situate
at .............. , to the EI~0P~ ~ZCNtT~OHS STANDARDS ~NSTITI;TE

whose registered office is situate at Route de8 Lucloles Sophla-Antipolis,
Val~onne, France (herelnaftar referred to as ~TSI).

2.

3,

The SI~ATOR~ is a member of ETSZ, and fully committed to the objectives
of ETSI.
The objectives of ETSI are set out ~n Articles 2 aIl~ 3 of the Statutes o£
ETSI.
The SIGNATC~X is prepared to grant certain licences which are necessary
to furth6r the ob3ectlves of ETSI.

The SIGNATORY therefore under~lkes as follows:I.

DEFINITIONS

The words and phrases set out below shall haw the follc~ing m~anings
ascribed to them for the purposes of the U~I11B~r!~G~1.1

"TBZ 8~D~ING" shall ~ this un~er%aklng including any
amen~en~s" ~d mo~ificatlons tie£eo~."

1.2

"ST£TUTORX IFR" shall mean any intellectual property right
crutedby statute law including applications therefor other
~han trademarks. For the avoidance of doubt rights relating
to get-up, confldent~alinforma~ion, ~rade secrets or the
like are excluded from the definition o~ STATUTORY IPR.

1.3

RI~I~D~’D (S’~TU~R~) I;~s shall zean STAT~TOR~ l~Rs
recorded in an official register including patents,
registered desig~s and ~il~t~ ~odels and shall include
a~pli~ations therefor.

1.4

~STAhr~AP~" shall mean any standard including o~ions
contained therei~ or amended versions anS shall include
~uropean Telecommunications Standards (ETS), £nteri¢ ETSs,
l~ormes Europeenes des Telecommunication (~ETs) and drafts
thereof, the technical specifications of which are available
to all members of ETSI and are agreed and ~romulgated by
ETSI. The date on which a STRh~D is considered to be
a4opted by ~TSI for the parposes of this UND~E"2AI<ING shall be
the date on which the t~hnlcal specification of that
~T~DARD was available to all ETSI members.
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1.5

"TERRITORY" shall mea~ tony and all countries:
whose national adminlstra%ion for telecommunications
is, at the date of a request By a USER pursuant to
clause 2.1 below, a muber O~ ETSI, or
in which an o~f£¢iall~ recognised national
standardization body has formally adoVced ~he STE~RD

and in the opini~ o~ ETSI the STANDARD has been

£mpl~ented in that country, or

in which, in the opinion of ETSI, a major
tele~mm~i~ations network operator ~as, or is about
to, pr~,~re, on a substantial scale, equipment to a
s~clficatlou ~liant with that STANDARD.

"USE" shall mean ~VW,~, sell, lease, or otherwise
~ispose in raw T~RI~ of ~UIP~NT so ~t~.tTUFACTUR~ and
repair, use, or operate NAN~A~ EQUIPKENT anywhere or
use or operate ~F2HODS in t~e TERRITORY.
1.7

"USER" means any competent legal entity and AFFILIATES
thereof who is a me~oe~ of E~SI, or who has given an

undertaking to STSI of ide~tlcal effect, mutatis mutandis to
the UmUEETAKING, for so lon~ as Its undertaking is in force.
1.8

~UIP~IB~T and ~" s~all mean any system, device, method

or operation tu~l~ confor~n~ to a sz~n~P~.
1.9

"ESSENTIAL" as applie~ to ~TA~JT~ IPR means that it is not
possible on t~J~nical $zo~ads to ~ak~, use, lease, sell,
operate or dispose o~ ~;IP~NT or ~2HOD$ which comply wit~
a STANDARD without infrlngi~ that STATUTORY IPR. For the
avoidance of doubt where a ST~ can only be implemented
by technical solutions, all of which are infringements of
STATUTORY ~, all such STATUTORY IPRs shall be considered
ESSENTIAS.

l.lO "AFFILIATE" of a firs% legal ~tity means: any other legal
eRtit~

directly or indirectly owning or controlling the
first legal entir~y or
under t~e same dlrect or indirect ownership or control
as the first legal eatity, or

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directly or indirectly owned or controlled by the
first legal entity,
for so long as such ownership or control lasts.
Ownership or control shall exist through the direct or
indirect~
ownership of ~ore than 50% of the nominal value of the
Issu~ aqulty share capital or o£ more than 50% of the
s~ares emt~tling the holders to vote for the election
of ~irectors or persons performing similar functions, or
right by any other means to elect or appoint directors,
or persons who togetaer can exercise such control.
k state, a division of a state or other puDlic entity
operating under public la., or any legal entity, linked to
the first legal entlt~2 solely throWh a state or any division
of a state or other p~blic entity operating under public law,
shall be deemed to fall outside the definition of an
AFFILIATE.

"MANUFACTURE", shall uan production of EQUIPXENT in the
TERR.~TORY in accordance wlth Regulation [~C) No 802/68 and
1318/71 as amendeg from time to time - sOn the common
definition of the concept of the origin of goods".
1.12 "INFORMATION" shall mean all information disclosed directly
or indirectly to ths $~6~ATORY or any of its AFFILIATES in
connection with work carried out under the auspices of ETSI
by any member of ETSI participating in standardisation work,
or by ETSI itself ~Ich that member or ETSI has indicated in
writing to be confidently1.
I.ii

.

The SI~AT~Y hereby under~akeE o~ behalf of itself and its
AFFZLIATgS o~ request by any USER to grant non-exclusive
licences to ~hat USER under and in accordance with any
ESSF~TIK5 E~!~_~"6TQR~ IPR which it or its AFFILIATES own
(including, ~uD~ect to clause 5 below, jointly owned
STATUTORY I..Z~) or control other than STATUTORY IPRs which it
has notified to ETSI p~rsuant to Clause 3.1 below in
accordance wi~-~ the terms an~ conditions of the U~DERTAKIN~.
Such licen=e~ ~mall he in the form set forth in Annex 1
attached hereto unless either the USER or SISMATORY objects.
Where the ~otal royalties payable for ~QUIP~ENT an~ METHODS
in respect :., ;~ISEI~TIP~L STATUTORY ~PR relatin~ to a
particular ~T~NDARD excee~ the maximum cumulative royalty set
by ETSX in accordance wit/ paragraph S of the Policy, the
S~GNATOR?, if it is the owner of a relevant ESSENTIAL
STATUTORY £PR, hereDy undertakes on behalf of itself and its
AFFILIATES, on the request of ETSI, to enter m~iti-lateral
negotiations with other owners of ESSENTIK5 IPRs relating to
that STAN~, and ETS~, to agree reductions in royalty rates
on all licences grants4 or to De grante~ in respect of s~ch
ESSENTIAL STKTUTORY IPP, s,
2.3

The obligation set ~orth in clause 2.1 above shall only apply
to STATUTORY IPRs created during or prior to any period in
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whic.5 a USER is bound by all the terms and conditions of an
undertaking to ETSI, identical, mutatis mutandis, to the
UMDERTAKINS. For the purpose of this paragraph and clause
8.3.2, the ~ate of crQation of a REGISTERED STATUTORY IFR
shall be the date on which the first application for said
REGISTERED STA~ IPR Was made anywhere in the world, and
the date of creation of all other STAGY IPRs shall be the
date on Mii¢3 the i~tallectual property to which said
STATUTORY IPPa relate came into existence.
2.4

The obligations set forth in Clause 2.1 shall cease when an
ESSEnTIaL ST!~T~X IFR ceases to be ESS~TIAL by virtue of a

change in the technical spe=iflcation of a STANDARD or

virtue of a c/range in the scope o£ protection of such
ESSENTIAL ST~~ Z~R, provided that a USER shall be
granted a licorice pursuant to clause 2.1 to the extent
necessary to edible hlm to meet all commitments existing to
third parties prior to the date of c~ange in the STA~tRD.
All licencea in respect of an ESSENTIAL aT~TUTORY IPR granted
prior to the date on ~ich that ~SK~TIAL STATUTORY IPR
ceases to be F~ENTIAL s~!_l continue to the extent that the
licensee’s prior commitments or serious preparations to use,
or actual use ~uld be unreasonably prejudiced by termination.

2.5

W~ere a legal entity has, pursuant to clause 3.1 indicated

2.7

The licences ~rant~4 pursuant to clause 2.1 above may be
limited to E~SE~TIAL 8TATJTORY ;PRs granted in the TERR’rTOR~

that it is not prepared to licorice a particular ESSENTIAL
STATUTORY IPR fora partiLmlar STANDARD which has been
adopted by ETSI priorto the ~ate of signature of t~e
V~DFaTAKIMG the SI~ATORY’S obllgations pursuant to clause
2.1 above to grant llce~ces to tAat legal entity and its
KFFISIAT~8 for that ~tiLmlar ~ shall be suspended
%m~ll SUCh tlm~ ~ ~t I~ ~L~L~ Irr~=~l¥ vi~h@mavo
its rightt~Tefum~"~it~m, for that parti~tar STAnDaRD in
respect of all ESSE~TIKL STETUTORY XPRs which it or its
AFFILIATES own or ~ontrol.
2.6 Licencea 9rauted p~reuant to clause 2.1 above shall be nonexclusive, om fair, r~asona~le am~ non-discriminatory terms,
shall permit USE of ~IP~T and ~ETHODS in the TERRITORY,
shall be of a t~chni~al scope limited to that necessary to
enable the USER to comply with t~e STANDARD, and shall
conform with ETSI’s p~llshe~ policy on intellectual property
rights.

~rovided said !icences permit, in respect ~ a11 ~SSE~TI~

STATUTORY IPRs, ~CTt%~ED E~UIP~E~T to be use~ but not
sold or otherwise ~ispose~ of, a~ywhere, an~ ~evices,
sub-systems, materials or the like for use in ~F~FACTURE to
~e made or procured anywhere.
The 81~NATORY on behalf o£ itself and its AFFILIATES hereby
undertakes not to seek an i~j~nction in respect of any
ESSENTIAL STATUTORY IPR in respect of:
- offers for sale of E~I~E~T and ~r~ODS or parts
thereof to a customer in any country by a USER, or

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t/%e supply of EQUIPKENT and KETHODS or parts thereof
by a USER tO a customer in any country and the use

thereof by the custoaer in any country where it can

be demonstrated by objective evidence that it is
used OrLl~ for a trial or pilot system directly
associated with seeking the adoption of a STANDARD
in that country.
2.9

The SIGNATORY hereby undertakes on behalf of itself and i~s
AFFILIATES tO pursue to a conclusion all licence
negotiations, both as licensor and licensee, arising from a
request made for llcemces pursuant to clause 2.1 above in
~OO4 faith and without undue delay and to refrain from taking
egal action against any person who has requestea a licence
pursuant to the ~%~RTAKING in respect of any STATUTORY IPR
which is or has been acknowledged by the SiGIfATORY as
ESSENTIAL STAT~0RZ IPR available for liceace pursuant to
clause 2.1 above for infrlngement of that ESSENTIAL STATUTORY
IPR, providing that person pursues negotiations relating to
said licence in good faith and without undue delay, pending
resolution of the terms of such llcence.

2. i0 Where a dispute betwee~ a SIGNATQRr and USER relating to

licensing terms and conditions, other than the level of
royalty, is referred, pursuant to clause 13, to arbitration,
the arbitrators shall, in the absence of reasons to the
contrary, take into co~slderation the licensing terms and
conditions of the Model Licence Agreement set forth in K~L~ex
I.
2.11 Where a legal entity is not an AFFILIATE of any one member of
ETSI, but Control;oT that legal entlt¥ can be exercised by
two or more members of ETSI or their AFFILIATES including the
SI~ATOR~ or his I~TILIATES acting in concert, the SIGNATORY
undertakes on behalf of itself an~ its KFFILIATSS to use all
reasonable endeavours to ensure sald legal entity signs an
undertaking equivalent to the U~DERTAKING.
DISCLOSURE OF STATUTORY INTELLECTV~ PROPERTY RIGHTS
3.1

Where the SIGNATORY or any of its AFFILIATES is not prepared
to grant licences for a particular STA~DK~D in respect of any
particular STATUTORY IPRs which it or any of its AFFILIATES
owns or controls, the SI~ATORY on behalf of itself an~ its
AFFILIATES undertakes to notify ETSI of the identity, ~efined
in a clear and unique manner, of such STATV!DR~ IPRs and the
STANDARD proposal tO whic~ ~ey apply in accordance with
procedures lald down ~ ~TSI. Where the SIGMATORY or any of
its AITILIRTES wish to declare any of their STATUTORY IFRs
unavailable for licence in respect of a particular STANDARD
adopte~ prior to the date of signature of the U~{DERTAKIMG he
undertakes on behalf of himself and his AFFILIATES to make
the declaration within 3 months of the said date of signature.

3.~

The $1G~ATOR~ undertakes on behalf of itself and its
AFFILIATES to make use of clause 3.1 above only in
exceptional cases.
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3.3

3.4

The SI~ATORY on Im3a~ of itself and its AFFILIATES
~n~ertakes not to wlthhol~ wilfuily from ETSI the identity of
any STATUTORY IPR which it or its ~ILIATES own or control,
which coul4 result In.a 8TAh3ARD being specifie~ in a manner
which would cause sai~ STATUTORY ~PR to be ESSENTIAL.

3.5

Q

Where a SI~&TORY fails to notify ETSI in compliance with the
procedures referred ~o in clause 3.1 above of the identity of
a STATUTORY IPR, the SIGNATORY hereby undertakes on behalf of
itself and its AFFILIATE8 to grant licences pursuant to that
STATUTORY IPR in accordance with Clause 2 above.

The SIGNATCRT on behalf of itself and its AFFILIATES
undertakes, when requested by ETSI, to notify ETSI of the
maximum royalty rate or the nature of alternative
consideration acceptable to offset all or part of sai~
maximum royalty rate it will demand for the grant of licences
in respect of a partIE~lar proposed STA~ARD pursuant to any
STATUTORY IPRs i~entifled in the request, within 90 ~ays of
receipt of ~he request,

SOFTWARE AND MASK W~RKS

4.1

4.2

1,or the Rurpose of ~ clause 4, software shall be deemed to

include ~puter programs, .interfaces, communication
protocols, codes, da -~., data formats, instruction sets or the
like.
""
The $1G~ATORT and ItSKFFILIATK9 shall not be obliged by this
clause 4 to make any: disclosure of INFOR~TION, software or

eask works and the li~nces granted pursuant to clauses 2 and

4.3 shall only extand to that which has been proposed to ETSI
by the owner of the rights in the software or mask work for

standardisatlon purposes.

4.3

Where a SI~ATORY has made a non-confldentlal proRosal of
software to ~!SI or ~TSI meaber$ in the course of ETSI
standardisatlon work, :.an~ that software has been incorporated
in a STANDAED so that copyright in that software becomes or
is deemed to be an ESSENTIAL STATUTORY IPR, the SIGNATORY on
behalf of itself and its KUFILIATES undertakes on request by
any USER %o grant non-excluslve llcences to that ~SER to
enable him to co~ply with the STANDARD pursuant to any
copyright which constitutes an ESSENTIAL STATUTORY IPR whi=h
it or its AFFILIaTES. own (including, subject to clause 5
below, Jointly owned_~TKTUTORX IPRs) or control on fair,
reasonable, non-prohlbitive, and non-~iscriminatory terms to
copy, a~apt, an~ translate the software, grant sub-licences
to end users of the software, sell, use or lease EQUIPMENT
incorporating ~le software or ~Ike such other use of the
software as ~ay be necessary to enable the USER to comply
with the STANDARD.

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The SIGNATORY hereby undertakes on behalf o£ itself and its
AFFILIATES to use all reasonable efforts to ensure that all
STATUTORY IPP~, which are or may become ESSENTIAL, Yhich it or its
AFFILIATES jointt7 otto with third parties, are available for the
grant of licences pursuant tm clause 2 above,
6~

6.1

The SIG~ATORT and its ~ILIETES shall be relieved of their
obligation to ~Tant amy llcence under STA~7 IPRs to the
extent that they can ahow that they are not contractually
free to grant such licences pursuant tca contract pre-dating
tJ~e UN~IMG provided that the SIGNATORY and its
AFFILIAT~ have made a bona fide attempt to identify and
notify ETSI o£ all such prior contracts at the time of
execut~g the ~l~T~llq@.
Nothing in the U~m~%KING is to be construed as requiring
the commission of any.act contrary to law and wherever there
is any conflict between any provision of ~he UNDERTAKING and
any material statUte, law or o~inance ~he latter shall

prevail, but in any such event the provisions of the

UNDERTAKING affected mball be cu~ailed and limited only to
the extent necessary %0 bring them within the legal
requirements, and such provisions, so curtailed and limited
together with all other provisions of the UNDERTAKING shall
continue i~ full force a~d effec~ in accordance with the
terms hereof.
5.3

If the SI~ATORY or ~ of its AFFILIATES acquires ownership
or control of ~ IPRs after the date of execution of
the UNDERTAKING which ~ue to contractual commitments
pre-dating such acquisition are not available for licensing
pursuant ~o the YDERTAKIMG, the SIGNATORY shall identify and
notify ETSI of su~ ~Y IPRs without undue delay.

5.4

Where a legal entity becomes a nsw AFFILIATE of the SIGNATORY

after the date of execution of the U~[~ERT~EING, the S~GNATORY
shall use its best endeavours to ensure that the new
AFFILIATE is bound by the terms and conditions of the
UNDERTAKING. Where a SIG~ATO~ is unable to bind a new
AFFILIATE to the terms and conditions of the U~DERTAKI~G, it
shall immediately disclose its inability to ETSI together
with ~ii details of the reason for its failure, and shall
submit to whatever penalty is provided by the ETS~ statutes
which, in the worst case, shall be resignation from ETSI. An
AFFILIATE who is not bound by an undertaking equivalent to
the UMDERTKKING shall not be entitled to enjoy any rights
granted by equivalent undertakings signed by members of ETSI
and others.
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6.5

The SIGNATORY on behalf of itself and its AFFILIATES hereby
grants and undertakes tm grant, ETSI, non-exclusive licences
free of any financial[ consideration, pursuant to any literary
or artistic cmv!right whic~ the SIG~ATOR~ owns or controls in
non-confi~tlal ~c~ants which the SI~ATORY supplies to
ETSI or any committee of BTSI, pen~itting ETSI to reproduce,
translate, adapt, edit. or p~blish all or part of such
dOCuments in ETSI t~.K~ical reports or standards
specifications.

Any licence granted smrs~ant to 6.5 shall authorise ETSI to
grant sub-llcences to %hlrd parties on ten and conditions
determined at the ~is~tion of ~TSI. In particular such
sub-licences may be royalty bearing or free, and may
authorlse the grant of furtter sub-licences. The SIGNATORY
shall have no claim on a~y ~Inancinl return obtained by ETSI
from the grant of sue/, sub-licences.
i .

6.7

The SIGNATORY on behalf of itself and its AFFILIATES hereby
undertakes, wheu r~quQst~ so to 6o by ETSI, to assign any
copyright it may own ~n a complete work which comprises an
ETSI technical repot%, ETS, or I-ETS as p~blish~ by ETS~.
The SIGNATORY and its LvI~ILIETES shall not be required to
assign any ~l)yrlght .~ey may own in a work incorporated in
an ETSI technical report, ETS, or I-ETS, m~less it comprises
the entire work.

6.8

ETSI shall respect author’s rightm in documents supplied to
~(I or ita ~r).Img ~ittees by the SIbI(ATORI, and shall
indemnify and hold harmless the SIGI[ATORT in respect of any
action relating to author’s rights arising from any use by
ETSl or :£ts su~-lic~n~es OT 80C~I~ent~ supplied by th#
SI~ATORY to ETSI.

6.9

The SI~ATORY on b@Ralf of itsel~ and its RYPI&ZATES
undertakes to apply t~ rules set for~ in Annex 3 to the
UNI~ERT~IlNG relatingto Joint liabiAtty of the purchaser and
vendor of E~UIPI~P~ specified by reference to a STANDARD ~or

-:L

infring~nt o( ce~ai~ ESSEnTIaL IPRs.

6. i0

The SIGNATORY undertakes on behalf o£ itself and its
AFFZLf~%TE$ that in a c~utract relating to EQUIPMENT and
~ETHODS with another party ~ho is a m~er of ETSI or a
signatory to an undertaking equivalent to this UNDERTAKI~O or
an AF?fLI~tT~ of either, it will not include a term requiring
IPRs to be licensed in any other way than in accordance wi~h
this V~DERTAKI~G.

6. ii Nothing in the ~]]ERTAKING shall be interpreted as in any way
limiting or restricti~.g the freedom of the SIGNATORY to
assign or re-assign hi~ employees participating in ETSI work.
7~

COh~FIDt~T IAL ITY
7,1

The SIGNATORY her~ u~ertakes on behalf of itself and its
AFFILIATES ~o keep confidential all INFOREATION for a period
of two years from the ~ate Of dlsclosure or until the
SIG~ATOR~ is rel~ase~ from any obligation of confidentiality
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in respact of the I~’FOREATiO~ by a written communication
issued by the discloser thereof or by ETSI, after having
obtained tae consent of the discloser of the I~FORMATION,
whichever be the earlier.
7.2.1 use the I~I~OP~tAT~O~ only for purposes associated with
f~hering the objectives o5 ETS!, [hereinafter
referred to as ~he P~ITTED PURPOSE);

7.2.2 not disclose the I~TIO~ or permit it to be

dls~loaed to ~ perso~ (other than an employee of the
SI@NRTOEY or its AFFILIATES who needs to know it in
connection with the P~ITTED PVRPOSE) without the
express writte~ consent of ETSI.

7.2.3 not incorporate any Of the I~FORN~TION in an

application for a patent without the express written
consent of ETa;.
7.2.4 ensure that all employees of the SIGNATORY or of its
AFFILIATES in r~ceipt of IW~AT~ON have either signed
a confirmation ~orm as set out in Annex 2 or are
otherwise bound by a contractual obligation of
confidantlality~ to t~e SI~T~L
7.3

The obligations imposed by 7.1 and ?.2 above shall not apply
tO:

(a) INFORMATION

In the p~lic doaaln otherwise than in breach of

the U~~--

(b)INFORMATION

which the SIGNATQRY can show to have been already
in its possession prior to any disclosure to which the
U~DERTKKING relates a~d which came into their possession from
a source unrelated to ETSI or a member thereof;

(c)INFORMATION

which the SIC~NATORY can show that he developed or
~iscovered indepandeatly a~d without reference to any
information disclose~ to them under or in connection with the
U~DERTAKING;

(a)Ih~FOR~%TION

obtained from a thir~ party (including an ETSI
member) who is free to divulge it without imposing an
obligation of confideatiality;

(e) INFORMATION

requited tm be divulged by order of a court or
other competent ttibtmal;

7.4

Any breach of the requir~ents of this clause 7 ~iscovered by
the SI~NATOR~ shall JJ~nedlately be ~otifie~ to the Chairman
of ETS~’s IPRC ang to the discloser of the ~FORMATIO~.
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TERX~ATIOH

8.2

The UNDERTAKING may b~teru~ated by the @I~ATORY by giving
ETS~ 24 months written notice of its i~tention to terminate
the UN~n~TAKING.
The S~G~ATORY may not tera!Date the UI~ERTAKIHG unless he
simultaneously gives 12 ao~tha notice in writing of
termination of his meabership of ETSI. The date of
termination for the purposes of clause 8 shall be the date on
which the SI~KT~RY ceases to be a member o£ ETSI.

B.3

The effects of teminating the UF~T~XI~G are:-

8.1

8.3.1 All licances 9ranted by or to the SIGNATORY pursuant to
the ~EKI]~ shall continue in full force and effect.
8.3.2 The obligations o~ the terminating SIGNATORY to grant
licenc~ pureuant to the Ub3E~AKING 8ha-ll:
-

in the case Cf ST~I IPRs identified to or by

~TSI as ~eBE~TIAL, prior to the date on which the
SIGNATORY ceases to be a m~er of ETSI, survive
termination :until such t~e as said STATUTORY IP~s

explre.

- ~n the case iQf other STETUTORT IPRs created before
teraination of tha U~DERTAKI~S, and identified as

3SS~TI~L within a period of 2 years from the date

on which ths.Sl~A~i~ ceases to be a member of

~SI, eurvi~t~ralnatlon of the U~DERTAKI~ until

such ti~e aa~said ~! IPRs expire.
° Creation sh~’l~ve-the sau meaning as in clause

~.3 above.
8.4

Where an AFFILIATE of a SIGnATOrY who is not a member of
~TSI in its own right ceases to be an A~TIL~ATE, the

~IGNATOR~ shall cease,, u~on the ~te of cessation, to ~ave
any liability whatsoe~er in respect of that legal entity’s
compliance or otherwise With the UNDERTAKINg. Any legal
entity ceasing to be an ~ILIAT~ Of the SI~ATURY shall be
deeme~ to have given ETSI 24 months’ written notice of its
i~tentlon to termieate the U~DERTAKIM~ pursuant to clause 8.1
above.
9.

WAIVER OF DEYAULT

No waiver by ETSI of an~ default of the SI~ATORY shall be hei~ to be a
waiver of any other or subsequent defaults. The failure of ETSI at any
time to enforce any of the provlsi~ns of the UNDERTKKINe, or to exercise
any right hereunder provide~, shall not De construe~ as a waiver of that
provision or prevent s%bsequeat exercise of that right.

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All communications provided £or hereunder shall be in writing and shall
be delivered or mailed by registered mail to the applicable party at the
addresses indicated below:-

oeeegQ4, ooaee#ee

/ooleimooD~e44, e~

~otices shall be sent to the BTdl at"

European Telecommunications Standards Znstitute
Route des Lucioles
Sophia - Antipolis
valbonne
FRANCE
All such communications shall be effe~ive when delivered.
ii. HRADI~GS

The head:Lnc~s hereof are included for convenience of reference only and
shall not be deemed to be a part Of the U~0ERTAK!NG,
12.

COHSTRUCTIO~

The construction, validity and performance of the UNDERTAKING shall be
governed in all respect by the laws of Prance.

13.1 In the event o~ a dispute or difference between the

81~ATORY, and a signatory of an equivalent undertaking
mutatis mutandis arising out of or in connection with the
UNDERTAKING, its interpretation, or application, the parties
to the dispute shall first use their best endeavours to
settle the dispute or difference amicably within a period of
3 months after one party has announced in writing to the
other that there exist~ a dispute or difference.

13.2 All disputes or differences which cannot be settled as

provided ~or in clause 13.1 above shall De finally settled by
ad hoc arbitration by three arbitrators, one arbitrator
shall be appointed by each party to the dispute, and the

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third arbitrator, who shall act as Chairman, shall be
appointed by the two first appointed arbitrators. If the two
first appointed arbitrators ~ail to agree upon the third
arbitra£or within 6 weeks of the appointment of the second of
the first two, the ~hlrd arbitrator shall be appointed Dy the
Director of ETSI. ~le Chalrma~ of the arbitration panel
shall have proven experiencQ in ~he issues in dispute.
13.3

The arbitrators shall follow the rules Of conciliation and
arbitration of the International C~%mber o£ Commerce in its
edition ~UTeat at ~/~ time of arbitration without involving
the International C~a~ber of Commerce in a~inlstrative
matters o

13.4 If there be more ~ one party on one, or on both sides, all
parties being on one side shall act jointly and unanimously
as a single party for:the appointment of arbitrators and any
other activities in the course of arbitration.
13.5 The arbitrators shall use their best efforts to give their
final judgQm~t not later th~ six months from the date on
which the third arDi£rator has been appointed.
13.6 Unless otherwise a~reed, arbitrators shall have taeir

meetings and hearings i ln Sophia-kutipolis.

13.7 The award of ~he arbitrators shall be final and binding upon

the disputing par~les,

13.8

Issues Of IPR L~fri.gaent an~ validity shall not be decided
k~-the ~rbitrators, hovever ~isloas relatin9 t~ t~e
ESSEIqTIALIT7 of an ZPR may be made, as between the parties,
by ar~itration and shall be ma~e availa~ie by the parties to
~"~sI for distri~ution to all m~lbers, toqether with the
reasons for ~be arbitrator’s decision.

If and as long as ~he SZ~aTOR~ is not permitted by law to be
a par~y to arbitration and a dispute arises out of the
UNDERTAKING which involves the SIGNATORY, rhea sUch dispute
shall be su~itted to the ~uris~iction of a competent court.
13.10 The cOStS of arbitration shall be borne by the parties

thereto and apportioned as the arbitrators shall ~ir~-t.

14.

RETROACTIVE EFFECT
14.1 The U~DERTKKI~S shall supersede and replace all previous
undertakings given to ~TSI by the 8TG~ATORv. ~hich relate to
ESSENTIAL STRTUTORY IP~. Eli such prior undertakings shall
be regarde~ as null and void ~/ E~SI and its mea~ers.
However, where the t~ and conditions of licences granted

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or offered pursuant to such earlier undertaking vould be more

favourable as a whole than the terms and conditions of a

licsnce granted pursuant to the UNDERTAKIMG, the SIGNATORY

undertakes on behal@ of itself and its A~rfILZATES if so
request~ to grant 1.:tcence~ ~ respect of ESSENTIAL STATt~ORY
IPRs on the terms and conditions specified in said earlier
undertaklng.

15.

COMPLIANCE WITH ~TSI POLIC~

The SIGNATOR7 on behalf oF itself and its 3FFILIATES accepts that its
AYfZLIATES are subject to the Statutes of RTSI as though they were
members of ETSI and under~es ~hat it and its ~FFILIATES will comply
with ETSI’s IPR poli=y and any ruling made by ETSI pursuant to that
policy or ETSI’s Statutes.
For and on behalf of ...............................

Position ....................... ,...

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4302s

LIt’~CE kGREEME~ made ~ ...... this,.... &~, of ...... between ...... whose
reglstezecl office is si~uateat . ....,.. (hereinafter referre~ to as ~the
LICENSORN and .. ..... whose reqi~ere~:offlce Is aituate at ........
(hereinafter referred to as "the LI~SEE’).
I. The LICENSOR has given an undertaking to ETSI ~ated ..... to grant
licences in respect of ESSE~I~L STAT~TOR7 IPRs owned or controlled by the
LICENSOR, and

2. The L£CENS~ is the proprietor of certain E%~g~IAL STATUTORY IPRs listed
in Annex 1 attached hereto.
3.

The LIC~S~ has glvem an ,nd~ing %o KTSI dated ............... on

terms equivalent, mutatis mutanais, to the undertaking given to ETS~ by the

LICENSOR.
,,
4. The LIC~S~ wishes to obT~rin li(M~Ice8 frOl the LICENSOR to USE LICENSED
PRODUCTS and PROCESSES, and the LICEh~8~R is prel~r~ to grant such licenses to
the. LIC~SE~ Upo~ t~e ter~s an~ ¢o~i.t~O~s hereinafte~ set forth.

T~ P~TI~B ~RETO ~GREE IS’~~- ~

i. DEFINITIONS
~cr the pur~ses of the k~i~T, unless the context clearly or necessarily

indicates otherwise, the followin~ wor~ and phrases shall have the meanings

se~: forth below:1.1 "~~" shall mean ~ licence agreement.
"LICENSED PRODUCT8 a~ ~" shall mean any system, device,
method or operation i~’ully ~f~n~iag to ~he ST~ARD and which is,
in the case of LICENSED PROINCT ~ACTURED in the TERRITORY.
1.3

"~TSI" shall mean the ~TELECO~UNICATIONS STANDARDS
INSTITUTE.

1.4

The "~TA~DARD" shall eeen the standard including its optional
versions for ......
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1.5

"STAT~TGRY IPR" shall mean a~y intellectual property right created
by statute law oIuher than trademarks. Por the avoidance of doubt
rights relating to get up, confldeatial information, trade secrets
or t~e like are e~luded from the definition of STATUTORY IPR.

L~CENSED IPRs shall mea~ the ESSE~IAL STATUTORY IPRS listed in
Annex A. (Annex A shoRld li~t pata~te and the claims thereof which
are licensed toqether with all other STATJTORY IPRs licensed.
Where a STATUTORY IPR is not licensed as a whole a clear
una~bi~ous ~eflaltlon of tSQ exteat of the licence aus~ be
provided. )
1.7

1.8

1.9

"PENDING" as apPlle~ to an IPR m~ns that an application has been
made for the grant of that IPR, the a;~llcation has neither bee~
~ranted nor refused, and oa gra~t of the IPR the proprietor thereof
zs entitled to payment by virtue of law or regulation for any acts
performed by another wlthi~ the scope of protection of the IPR
during the period it was PE~I~S.
"ESSE~TIKL~ as applie~ to STAGY iPR means that it is not
possible on te~2~nical groun~e to make, use, sell, lease, operate or
dispose of L~CENSED PRODUCTS or PROCESSES which comply with the
STANDARD without IBfringL~g ~t S~TUTORY IPR. For the avoidance
o£ doubt where a STANDARD c~ o~.y De implemente~ by technical
solutions, all of which are infr~.ngements of STRTUTORY IPRS, all
such ST~TUTCR~ IPRs shall be Considered ESSEh~IAL.
"AFFILIATE" of a PARTY means: any legal ~mtlty
- directly or Indlz~:~3.7 ow~n~ or controlllng the .p~,
under the s~ ~if6~d~ ~ndlr~ owners~i~ or control

as the

~ART¥, or
directly or indirectly~ owne~ or controlled by the PARTY

for so long as such ownership or control lasts.
Ownership or contrDl shall ~ist through the direct or indirect:
ownership of more than 50% of the ~ominal value of the issued
equity share capital or, of more than 50% of the shares

entitlin~ ~!~e holders ~o vote ~or the election of directors
or persons performi~@ similar functions, or
right by any other mea~ to elect or appoint directors, or
p~rsons who together can ex~rcise such control.
°

A state, any division of a state, or ot~er public entity operatinq
under public law, or any legal entity linked to a PARTY solely
through a state or any division of a state or other public entity
operating un@er public law shall be deemed to fall outside the
~efinition of an AFFILIATE.

i.i0 ’NET SALES VALUE" shall meal% the ~ross sales value of LICENSED

PRODUCTS less t~e total of a~y value added taxes, freight,
packaging and insurance char~es shown separately upon an invoice,
if charges for packing, insurance and freight are not s~own
separately, a sum equal to 1.St of the total amount invoiced less
sales and/or value added tax may be ~e~ucted.

l°ll

"SALE" (~)r "SOLD") shall mean eels or disposal an~ shall include
lease.

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i. 12 "THE TERRITORY" shall mean auk7 and all countries:

whose national administration for telecommunications is, at
the ~ate of USE a member o£ ETSI, or
in which an officially recognised national standardization
body has formally ado~ and, i~ ~he opinion of ETSI, the
STAm~t~ has been laplemanted in that country or
in which in the opinion of ETSI, a major telecommunications
network operator, has or is about to procure equipment on a
substantial scale conformiag to a specification co~pliant
with the STY.

1.13 "USN" shall mean ~h%W~ACT~E, sell, lease or otherwise dispose in

the TERRITORY of L~CEI(SED PRODUCTS and repair, use or operate
LICENSED PRODUCTS anywhere or use or operate LICENSBD PROCESSES in
the TERRITORY.
i. 14 "MANUFACTURE" shall mean production of LIC~SED PRODUCTS in the
TERRITORY in accordance wlth Reg~!ation (~C) ~o 802/68 and 1318/71
as amended from time to time - "On the co~om definition of the
concept of the origin of goods."
The A~E~NT shall come into effect on the date first before mentioned and
unless terminated in accordance with the provisions hereof shall continue in
(orce and e~fect, until expiration of the last STAT~TORY IPR licensed
hereunder.
D

3. i" ~e" L TCENSOR "hereby 9Tant8 ~to the ~iICE~SE~ a non ~clusive licence
~urst~.~t to LICENSED IPRs to~3. I.i USE LICENSED PRODUCTS and PROCESSES.
3.1.2 Manufacture or procure anywhere devices, sub-systems
materials or t~e like solel~ for use in ~UFACTURE.

ROYALTY P~YMENTS
4.1 The 51CE~SEE shall pay to the LICENSOR a royalty of .... % of the
~ET SALE V~LUE of the LIC~SED PROV~CT8 manufactured or sold by him.
(- Alternative modes of payment may be agreed. )
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4.2 Royalties shall accrue to the L~C~SOR on the ~ate on which a
LICENSED PRODUCT is dispatched to a customer. Royalties due in respect
of transactions whic~ do not involve sale shall be based on the ~ET SALES
VAL~ £or an arm’s len~h sales transa~tlon.
4.3 Royalties shall be ;mid only onto per LICENS~ PRODUCT, and only if
a LICENSED IPR is la fo~co at the ~ate on which t!le royalty accrues ia a
COU~!RT in which the LXC~S~ ~92[~~, sells, uses, l~ases or
otherwise disposes of a LIC~SED FRODUCT. In respect o~ any PE~DIBG
LICENSED IPR, the royalty shall ~e ~ue with retroactive effect from
the ~ate, on which under the applicable law, the applicant has a right to
payment provided t~at the LIC~SED IPR is grant~.
4.4 The LICENS~ shall submit ~ the LIC~SOR on or before ...... and
..... respectively in each year ~rinq the term of the AGREe, a
statement of all royalty bearing a~Ivlty made Dy ~he LICENSEE ~uring the

SiX ~n%h period commencing eight months prior to the date on which the

star,ant ~or royalty h~arlng a~ivity is due. ~ "nil" statement shall
be made when appropriate. The LICENSEE shall pay all su~s due hereunder
at the sa~e time as suD~iss~on of the statement. Tl~e LICENSEE shall pay,
together with the fir@t s~at~ent, any amounts ~e for infringements
which accrued before the effective ~ate of the AGREEMENT, and shall pay,
together with the statement followi~g the ~ate of gra~t of a PEKDING
L~C~S~/ IPR, any a~ounts due up to the date of grant.

%.5 The nICE~SEE agrees to keep true an~ accurate books of account wi~
regar~ to all royalty b~aring activity. T~e L~CE~SOR shall have the
right from time to time to cause ~he LI~SE~’S relevant r~cor~S to be
Inspected and audlt~4 ~y a prof~ional accountant appointed by the
LICENSOR and acceptADle to t~e LI~S~E. Fo~ the above ~!rposes the
L~ENSEE sh~ll allow ac~es~-~o it~q~es to the ap~oi~t~ accountant
and disclose the relevant accouat~ and records. If the auditln~ s~ows an
error in payments made of at l~as% 5%, to %he disadvantage of t~e
L~C~NSOR, the LICENSEE shall bear the ~ost~ of ~he audit. All unpaid
royalties and audit fees ~ue shall be paid immediately.

4.6 In ag~itlon to payments mad~ F~rsua~ to clause 4.1 above, the
LIC~SEE shall pay go the LrC~ any value added tax or equivalent tax
which the L!CENSOR is lla~l~ to pay referable to the payments referred go
in clause 4,1.
4.7 The LICENSEE shall be ~ntit!ed to deduct any income tax which he is
required to withhold at source from the sums payable hereunder, provide~
t~at he shall do a!l things ~ecessary to enable the LICENSOR to claim
exemption therefro~ ~nder any treaty ~or the avoidance of double taxation.
MISCELLANEOUS PROVISIONS
5.1 The LICENSOR shall not De liable to indemnify the LICE~SEE against
any loss sustained by him as a result of any claJ~ made or action brought
any ~hirdpar%y for infringement o~ any intellectual property right Dy
reason of ~SE of LICF~SED ~D~CTS.
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5.2 The Fights and obligations of either PA~T~ to the agreement may be
assigned oF sub-licensed to a~y KFfILIATE of that PARTY at any time
during the period o£ the A~%~T, pr~vlde4 that the assignee or
sub-licensee undertakes to be bound ~2 the terms and conditions of the
AGREEMENT as though he was the assignor or stt~-lice~sor, mutatis
mutandis, and to indeauify ~he other PK4TZ to the A~T against any
loss or damage resulting from the usi~ent or s~lb-l~cence, subject to

the prior agreement of the other P~RT], which agreement shal! not be
unreasonably withheld.

5.3 For the awidance of dour, and s~bgect to clause 5.2 above, the
licences herein granted do not i~lude the right to grant suD-llcences or
the right to have LICENSED P~O~CT~ made.

5.4 Except as provided for in clause 5.2 above, the r lC~S~ shall not
assign, trans£er, mortgage, charge (e~capt ~or any floating charge on
company assets} or part with, any of his rlghts, duties or obligations
under the ~~.
5.5 Where tile LICENSEE sells LICENSED PRODUCTS in a cotultry whose law
requires goo~s subject to IPRs to bear a mark identifying the IFRs or
whose laws impose any penalty or d~sadvantage on the proprietor of IFRs
when goods ~o not Dear such a mark, the LIC~SK~ shall use his reasonable
endeavours to appropriately mark ~I~:~$~D P~ODUC2S in accoreance with the
law of the country in which they. are sol~.
S. 6 The LICENSOR does not warran~ t~at any of the LICENSED IFRs are
valid and does not undertake to maintain any of them.
5.7 The LIt~NSOR does not ~ar~n~ee the succems of production by the
LICE~ R~r ~he" q~q!Ity ~d ft~%llty of LIC~SED PRODUCTS made by
the LICENSE~, nor does it make any ~mrrant¥ of merchantability of
LICESSED PRODUCTS. The liability ~or technic~l ~efects, including
product liability, shall rest e~lusivel~ witA the LIC~S~.
S.8 ~o the extent ~ermitted by the appltca~ie law specifie~ in clause
12 of this AGREEKE~T, the liability of "the LICENSOR sha!l be determined
solely by the term~ of the A~EE~Ff. The LICEnsoR does not accept
liability for damage suffered by thir@ parties and consequential damage.

5.9 The LIC~I~$EE ~ndertakes, on ]~half of itself and its AFF[LLKTES,
~uring the perio~ in which the LIC~SK~ is bound by an undertaking to
ETSZ, and to the extent that the LIC~SEE is oblige4 to 4o so pursuant to
such undertaking, to ~rant licences to the 51CE~SOR and its AFFILIATES in
respect of ESSENTIAL STAGY IPRs,
~B

6.1 The agreement may only be tefalnata~ by the LICENSOR on written
notice to the LICENSEE if the LIC~Ematerlally breaches any of the
terms of the A~~T and such breach is not reaedied within a period of
60 days after notification thereof, such notification stating the
intention to terminate if such breac~ is not remedled.

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6.2 The AGREEmEnT may be terminated by the LXCEMSEE by giving the
LICENSOR 12 month’s written notice of h~s intQnt!on to terminate the
AGRBK~ o

e.3 The A~REEMENT shall expire if not terminated earlier on the date of
expiration of the last LICENSED IPR to expir~.
6.4 Upon termination of the A~ pursuant to clause 6. I and 6.2
all rights granted and obllqationa Impos~4 by the AGREEMENT are
terminated save that the LIC~SE~ remalns obliged to pay any sums due
pursuant to clause 4,
~othing in the AGRE~T is to be construed as requiring the commission of any

act contrary to law a~d wherever there is any conflict between any provision
of the AGI~ and any material statute, law or ordinance the latter shall
~evail, but ia any such only ~othe provisions of theto bring them within the
curtailed and llmite~ even% the ex~e~t necessary AGREEMENT affected shall
legal requirements, and s~ch prov~ions, so cur%ailed and limited, together
with all other provisions of the AG~ shall continue in full force and
effect in accordance wi~h the terms hereof.
e

WAIVER oP DEFAULT

No waiver by either PARTY of any default of the other PARTY shall be hel8 to
be a waiver of any other or subsequent 8efaults. The failure o~ either P~RTI
at any t~me to enforce any of the provisions of the AGREEMR~T, or to exercise
any right hereunder proviged, shal! not be constru~ as a waiver o~ that
provision or prevent "subSequent e~eru~Se of ~3at right.

All comauni~atlons provlded for hereunSer shall be L~ writing an~ shall be
~ellvered or mailed by reglster~ (air) mail to the applicable ~RT¥ at the
addresses Indicate4 below:-

~otlces shall be sent to the LICE~SOR at:

~ot~ces shall be sent to the LICENSEE at:

veevm~e~ve~e~

All suc~ communications shall ~e efSectlve when ~elivere~.

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10.

I0.1 The AGREEMEh~ c~netitutes th6 enti~e agreement between the PARTIES
and shall not be modlfim~ or am~d~ ~ b~ an instrument in writing
of subsequent ~ate berne ~ly ~ted ~ ~ of the PARTIES.

10,2 R/~nex i shall from time to t~me bm amended subject to the
agreement of ~ PARTIES to the ambient and any other consequential
nen~ment of We A~REE~hT. ~o~vA~tanding clause i0. i, ~he LIC~SE~
may ~nilaterall~ delete any LIC~ r~ frQQ Annex 1 from the date o£
receipt by the LZC~SOR of notiflcat~oa in writlng of the LICENSEE’S
decislon to u~ilaterally Q~le~e such LIC~ED IPR.
10.3 At the LICENSEE’S z’.e~est_the LICENSOR a~rees to r emegotiate the
re,alLy ra~es or thelr equlv~l~m~, ~.~ ~ e~zfl~ in clause ~.i a~ove
in the event that the LICE~ is r~q%tir~ tO make payments, in respect
Of ESSEFTIAL IPR whose existence w~ unkno~ to the Licensor or Licensee
at the ~ate firs~ before mentioned for ~B of ~/~e same LICENSED PRODUCTS
OR PROC~SSZS in the same co~nt~2, if n~ces~ary in order to comply with
paragraph 6 of 5TSI’s IPR polic~. ~wever, nothing in this paragraph
shall require ~he LIC~S~R to refum~ ~en~s already efft~’~e~.
ii. ~Y.KDIN~S
T~e headings hereof are included for onvenience o~ reference only and shall
not be ~e~ed to be a part of ~be A~.

12. CO~STRUCTI0~
T~ OnStz./ction, validity ~nd ~w.~fo~ of ~8"~ shail be governed
in all respect by the laws o£ ,., ......
13. S~ O~ DXSPUTSS
13. In the even~ o~ a ~is~te or difference ~etveeu ?ART£ES to the
i

~~ t~e e~ES s~tl f~st use their ~est endeavours to
settle the dispute or ~iffer~nco amim~ly wlt~in a period of 3
~onths after one part~ has a~o~nced in writing to the other that
there exists a ~ispute or ~iffer~e.

13 ¯All disputes or ~i~f~’ences which cannot be settle~ as provide~ ~or
2
in clause 13.1 above shall be finally settled ~2 ad hoc arbitration
~,~ three arbitrators. One arbitrator shall ~ appointed Dy each
party to the dispute, an~ the %hi~ a~bitrator, who shall act as
chairman~ shall be appointed ~ the two first appointe~
arbitrators. ~f ~he two first al~poimted arbitrators fail to agree
upon the thir~ arbitrator wit~i~ S weeks of.t~e appointment o~ the
secon~ of the first two arbitrators, the thLrd arbitrator shall be
appointe~ Dy the Director of ~TSIo The Chairman of the arbitration
panel shall have ~’oven ex~erlence i~ the issues in dispute.
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13.3

The arbitrators sh~ll follow tbQ rules of concilliation and
arbitration o~ the International C~m~er of Commerce in its edition
~rent at the ~ime o~ ~bltration wi~out involvicg the
International ~Le~er o£ ~erce ~ administrative matters.

13.4 ~:z there be more ~ one m~:y on one, or on both ~ide,, all
pestles being on onQ side~hall
act Jotn~¥ ~d unanlaously as a
single l~arty £Or ~e appol~taent of a~bitrators an~ any other
activities in the course of arbitration.

13.S The arbttratoL’s Shall use theh- best efforts to give their final
judgement not later than six aont~ £rcm ~e dats on vbich the
third ~rbitrator h~s b~en a~ointed.
13 ¯ 5

gnlus otherwise agreed, arbitrators s~ll l’~ve their meetings and
bearings in So~hla-~tipo~s, l~ce.

13.7

The award of t~e a~bitratorS shall be ~i~al an~ binding upon t~e
dis~mt~mg parties.

13,8

Issues of II~ Infr~eae~t and validit? shall not be declde6 by the
arbitrators, however decisions relating ~o the ~SFJ~TI~L~TY o~ an
~I~ say be made, as between the partly, by arbitatlon a~d shall be
made available by the ~es to &~SI ~or distribution to all
~e~bs~s, to~e~her with the reasons ~or the arbitrator’s decision.

13.8

IZ and as long as one O~ the ~I~ is not permitted by law to be
a party to arbitration an~ a dispute arises out of the A~,
then such dispute shall be eul~Itta~ to the juris~ic~ion o~ a
compet~t court.
The ~ost~ of arbi~atlon g~ll be borne by the parties thereto ~6cd
apportioned as the arbltrators g~l,1 direct.

For and on ~alf of ................. ,.. ..........
meoeeea~eoe~eo~ mm~ $eeemoe~ee

POsitio. ..........................

Por ~m~ on behal~ of ...............................
Position ...........................

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(the ~LO~) hal si~ed an UNDERTAKING. The tens

In accordance vlth the above-nentioned ~@RTAKING the B~FLOYER is
obliged to ensure that all its ~plo~ees involved in ETSI work have
signed a CO~fIP~ATIOM ~R~ in orde~ to confirm that the employee has been
informed of the obligations in the ~XNG relating to
confiaen~iality.
3. I confirm that I am an employee of 0the E~LOYER and that I have read and
understood the annexed terms of the ~~I~S.

m~ ee..s~......~oo,,e*.,*se~e,

e4mmmo~eoQse~g~ em sme

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ANNEX 3 TO APP~DL~ A

i. ~e rules set out in t~!s Annu for shar~g the ri~ks associated with
infringement of ESs~rIIAL ST~T~’IX~ IPRs 8b~Ii only aI~lY to £nfringement

of ESS~TIA5 STATIr~R! IPRs which were not £deatlfled as ESSENTIAL or
potentially ESSE~TIK5 on an o~flcial ~I Iiet available to all ~BERS
immediately prior to the date on ~Ich the ~EW~ to which the BSSE~TIAS

STA~I IPRs relate Is a~ilable to
clause 1.4 of the ~RTAKIWQ, or is ~ilable to both parties of a
l ~ ~S of ~S I aS Set OUt

relevant pro~rement contract at l~t fo~teen &~ prior to the date on
which the procurement contract price was bln~g on the v~dor, whichever

llst was las~ available.

2. Sembers shall include terU and oRdi~!o~s ~ch ~ive effect to the
rules set out in this Annex in all contracts for procuraent of E~.P~%T
and ~HODS or part t~ereof (hereinafter referred to as ~ODS) which ara
specified in the contract, by re~erence to a ~ .

3. The iL~biliti~, incurred thr~ Infrln~aent of ~SE~TIA5 STATV~RI
IPRs, that are to be equitably shar~ are l£~it~ to~a)

the price of C~ delivered and/or ~)0~ £n stock and the cost
incurred of ~OD8 i~ t~e course of manufacture directly
a~tributable to a relevant procurement contract s~b~ect to
di~countlng tot z~--~le pa.~s and c~on~nts;

b)

4amages awar4e~ b~*~c~Rrt ~f la~or ar~rat~ ~ payments
associated wit~ the settlement O~ iMrin~e~ent o~ such
ESSE~TIA~ STA~ IPR togather vlth t~e associated legal .
costs whic~ are clearl~ l~eatified ~th the supply of ~OO$ to
whlc~ the contract relates;

c)

sums payable ~or any licences ~trsuant to such ESSENTIAL
STAT~TORI IPR which ca~ be objectively verified as relating
solely to ~DODS supplied under a relevant ~rccurement contract.

~)

%he cost o~ modi~ing socks to avoid infringement o£ zSB~TI~5
STAT~2OR£ IPRs.

For the avol~ance of doubt liabilities directly reZated to ~e
£n~ringement of ESSENTIAb STAGY IPRS which arls~ from use of GOODS by
t~e purchaser where:
t~e use is eltber explicitly set out in t~e relevant
procurement contract or in ab~auce thereo~ the use is that use
for which the ~ were ~igned, and
the infringement ariges solely by virtue ol use of the ~OODS as
supplie~ ~ndsr the relevant procurem~t contract;
shall be equitably share~ ~y the partias to a relevant procurement
¢on~r&~.

¯ (Explanatory note: procurement contracts are sometiaes placed before a
standard ep~ification referred to in the contract is published. )

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4.

For the avoldance of ~ indirect losses, consequential losses and

losses other than those referred to in paragraph 3 above shall not be
shar~ but sha!l lle where they fall.

~or the purposes of ~
6~ deAlver~ shall be
~e contract price discounted kunex the-price ofcalendar year between
by 10~ for each full
the date of delivery of the GOOD~ and the date on ~ the purchaser
first ceased ~sing the ~DS because of infringement of an ~I~6
STATUTORY IPR by the GOODS or use of the GOOD~.
6. Pot the parpo~es of this Ann~ ~OC~S, or .~e of GOODS, shall be
deemed to infringe an ISSE~TL~L ST~ IPR either:
by agreement of the parties to a relevant procurement contract,
OF

by virtue of a decision by a court o~ law competent to
determine issues of Ira tnfringeaent.
7. Upon discovery that GOODS supplied or to be supplied under a relevant

procurement contract may infringe an ESSPaTIAL ~TUT~Y IPR, the parties

shall meet and use their reasonable enduvours to agree upon a course of
action which Ltuiaises the total losses of all parties to the procurement
contract.
~i,

In co.sidering the course of action to.he followld the parties shall give
favourable consideration to courses of action which luclude modlflcatlon

even if such modification results in the GOODS as ~o~ifle~ no longer
Complying with the relevant ~ or, shoul~ it prove impractical to

modify the O~ODS~ repurchase of the ~0~ by~ the supplier at the Ftice
epecif~e~ in Clause 5 of ~ Annex, The repurchase price less any sums
recovered by resale of the GO0~ or reuse of the parts thereo£ shall be
a~ded to the costs to be shared by the parties.
8. Where it can be demonstrated that ltcences are not available on fair
zmd reasonable terms in respect of an ~I~ $TATUTOR~ IPR which is
infringed by the supply or use of GOO~ ~rsuant to a ~rocurement
contraut¢ failure to supply or accept ~X)DS shall not be deemed a breach
of that contract. However, ~he parties:~may in accordance with paragraph 5
a~ove where this is agree~ modify GOODS to avoid infringement.
9. For the avoi~ance o£ ~oubt any licence which requires payment of a

royalty ]~t$~ on the extent of use ~f ~ shall De ~eeme~ to be on
unfair and unreasonable terms.
"

j.

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I0. The contribution by one party (including ~epurchasing costs) whether
by way of payment to the other party or by contribution to the cost of
modification of GOODS pursuant to equitable sharing of liabilities payable
as a result of infringement of ESSENTIAL STATUTORY iPR shall not exceed
the price to be paid for GOODS in the original Contract for supply of
those GOODS.
ii. Subject to paragraph ]0 above equitable sharing of liabilities set
out in Clauses 3a-3c above shall be sharing in equal parts between the
parties to a relevant procurement contract.

12. Nothing in this Annex shall be taken as requiring the SIGNATORY or
its AFFILIATES to refer any dispute relating to a procurement contract to
arbitration.

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