GSM Association Non-confidential

Official Document AA.32 - GSM Association Intellectual Property Rights Regulations

GSM Association Intellectual Property Rights Regulations

Version 4.0
31 August 2013

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Copyright 2013 GSM Association

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Table of Contents
1 Introduction 3
2 Definitions and Interpretation 3
3 Declarations of Essential IPR 5
4 Non-Assertion of Essential IPR 6
5 Licensing of Essential IPR 6
6 Refusal to Licence 7
7 Absence of a Declaration or Failure to Declare 8
8 Disputes regarding Ownership of Essential IPR 8
9 Participation of Associate Members, Rapporteurs and Non-Members in
Activities 8
10 General 9
Document Management 10
Document History 10
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1 Introduction

1.1 This document ("the IPR Regulations") contains the regulations of the
Association in relation to Intellectual Property Rights (as defined below).

1.2 Unless expressly specified by the Association in writing, the IPR Regulations are
applicable to any activities undertaken by an Associations project, forum, task
force or any other group, constituted in accordance with the Articles of
Association (as defined below).

2 Definitions and Interpretation

2.1 Definitions

Activity means any activity undertaken by an Associations project,

forum, task force or any other group constituted in accordance
with the Articles of Association.
Activity means:
Participant
(a) a Member and its Affiliates; or
(b) pursuant to the provisions set out in Clause 9:
(i) an Associate Member or Rapporteur; or
(ii) a non-member, by special invitation of the
Association;
participating in an Activity.
Adopted means Deliverables officially adopted by an Association body,
Deliverables committee, forum, task force or group, associated with a
particular Activity.
Affiliate means any subsidiary or holding company of an Activity
Participant, any subsidiary of any of its holding companies and
any partnership, company or undertaking (whether
incorporated or unincorporated) in which an Activity Participant
has the majority of the voting rights or economic interest.
Articles of means the articles of association governing the Association.
Association
Association means GSM MoU Association or the GSM Association.
"Associate means a specific group or organisation which has been
Member or recognised by the Association as an associated member or
Rapporteur" rapporteur within the Association.
Association means Members, Associate Members or Rapporteurs.

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Participant
Chairman means the person, appointed by the Association in order to
preside over an Activity.
Declaration or to means a declaration in accordance with Clauses 3.4 and 3.5.
Declare
Deliverable(s) means any deliverable that has been or is being initiated,
produced or developed through any work associated with an
Activity.
Essential IPR Essential as applied to IPR means, IPR, where it would be
impossible on technical (but not necessarily commercial)
grounds, taking into account normal technical practice and the
state of the art generally available at the time of approval of an
Adopted Deliverable, to Implement the Adopted Deliverable
without making use or infringement of this IPR. The meaning of
Essential Patent is construed accordingly. For the avoidance
of doubt in exceptional cases where an Adopted Deliverable
can only be implemented by technical solutions, all of which
are infringements of IPRs, all such IPRs shall be considered
Essential".
FRAND Terms means fair, reasonable and non-discriminatory terms.
Implement means in the context of Deliverables:
(i) to make, market, sell, licence, lease, otherwise dispose
or make use of; or
(ii) repair, use or operate equipment or methods as
specified in;
the respective Adopted Deliverables.
Intellectual means any copyright, Patent, registered design, and any
application thereof. Notwithstanding the foregoing, IPR does
Property Rights
not include trademarks, trade secrets, moral rights, right of
or IPR
know-how and confidential information.
"Member" means a network operator, telecommunications administration,
or GSM platform operator, which has been accepted by the
Association as a full member into the Association.
Patent means patent, utility model or any application for such.
Participation means the right of an Activity Participant to:
Rights
(i) participate in; and
(ii) receive an Undertaking pursuant to Clause 5 for any
Essential IPR in relation to;
a particular Activity (and Adopted Deliverable) to which
the Essential IPR relates.
Right of Refusal means, subject to Clause 3.5, an Activity Participants right of
to License refusal to grant an Undertaking pursuant to Clause 5 to any
other Association Participants.
Undertaking means an undertaking in accordance with Clause 5.1.

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2.2 The headings, marginal notes and references to them, in this document shall be
deemed not to be part of this document and shall not be taken into consideration
in the interpretation of this document.

2.3 References to any gender shall include the other and words in the singular
include the plural and vice versa.

3 Declarations of Essential IPR

3.1 The provisions pursuant to Clauses 3.3 and 3.4 below do not imply any
obligation on the part of an Activity Participant to:

(i) subject to Clause 7, declare any Essential IPR; or

(ii) conduct any searches of Essential IPR (including, without limitation, Patents);
that the Activity Participant or any of its Affiliate holds.

3.2 Pursuant to Clause 7, by default and in the absence of any Declaration in

accordance with Clauses 3.3, 3.4 and 3.5, for any Essential IPR associated with
a particular Activity, an Activity Participant is deemed to have given an
Undertaking for that Essential IPR associated with a particular Activity.

3.3 Subject to Clauses 3.1 and 3.2, prior to any official approval by the Association
of any Deliverables associated with a particular Activity, each Activity Participant
shall provide the Chairman with a written declaration of the Essential IPR
relevant to the above Activity:

(i) in accordance with Clause 3.4 and 3.5; and

(ii) in the form prescribed by the Association and with language consistent with
the policies set forth herein.
3.4 Subject to Clause 3.1, the Declaration shall:

(i) to the Activity Participants knowledge, list any potentially Essential IPR that,
the Activity Participant or any of its Affiliates hold in relation to that particular
Activity;
(ii) identify all such Essential Patents by way of filing number, date, and if
published its title; and
(iii) identify the terms (i.e. explicitly the non-FRAND Terms (as opposed to Clause
5.1, but without specifying royalty rates or any other royalty terms)) on which
the Activity Participant or its Affiliate is prepared to grant licenses to the
Essential IPR to the Association Participants and any third parties; and
(iv) identify whether the Declaration is made subject to the condition that those
who seek licenses agree to reciprocate.

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3.5 Any Declaration shall identify and describe in sufficient detail:

(i) by way of filing number, date, and if published, optionally its title, any
Essential Patents, for which the Activity Participant or its Affiliate, in
accordance with Clause 6.1, are unwilling or unable to give an Undertaking to
any Association Participants or third party pursuant to Clause 5; and
(ii) the reasons (for each of the above Essential Patents identified in Clause
3.5(i)), why the Activity Participant or its Affiliate are unwilling or unable to give
an Undertaking for these Essential Patents to any Association Participants or
third parties pursuant to Clause 5. .

3.6 The Activity Participant agrees that any Declarations may be made available to
all Association Participants, as the Association thinks fit.

4 Non-Assertion of Essential IPR

4.1 Each Activity Participant agrees never to assert its Essential IPR against the
Association in respect of the Association's publications and promotions of any
Deliverables.

5 Licensing of Essential IPR

5.1 Save in the case of any Essential Patents identified in accordance with Clause
3.5 and subject to Clause 8.1, an Activity Participant will have given an
undertaking that it is prepared to grant licences:

(i) on FRAND Terms;

(ii) to all its Essential IPR associated with this particular Activity;
(iii) to all other Association Participants; and
(iv) to the extent necessary to permit any Association Participants to Implement
the Adopted Deliverables to which the Essential IPR relates.

5.2 The Undertaking may be made subject to the condition that those who seek
licences agree to reciprocate.

5.3 Both, the Activity Participant, who is deemed to have given the Undertaking
pursuant to Clause 5.1, and any Association Participant wishing to acquire a
licence in accordance with Clause 5.1, acknowledge and agree that:

(a) they will act in good faith, in order to negotiate a licence agreement
pursuant to Clauses 5.1 and 5.2; and
(b) if they both have not been able to agree on an Essential IPR license
pursuant to Clauses 5.1 and 5.2, either party shall have the right to seek

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redress from the courts directly against the other in order resolve the
matter.

5.4 Each Activity Participant will ensure that its Affiliates, and its Affiliates'
successors in title will give an Undertaking pursuant to Clauses 5.1, 5.2 and 5.3
above. If an Activity Participant or its Affiliate transfers ownership of Essential
IPR that is subject to an Undertaking pursuant to Clauses 5.1, 5.2 and 5.3
above, such Undertaking shall include appropriate provisions in the relevant
transfer documents to ensure that the Undertaking is binding on the transferee
and that the transferee will similarly include appropriate provisions in the event of
future transfers with the goal of binding all successors-in-interest. The
Undertaking shall be interpreted as binding on successors-in-interest regardless
of whether such provisions are included in the relevant transfer documents.

5.5 It is acknowledged that the Activity Participant, owning any Essential IPR, shall
be free to exploit such IPR outside the scope of the Association at its absolute
discretion and any revenues or other benefits, which the Activity Participant may
receive from such exploitation of such Essential IPR, shall be for the Activity
Participants own account.

6 Refusal to Licence

6.1 An Activity Participant shall only be able to exercise its Right of Refusal to
License with regards to Essential Patents, but no other Essential IPR, which is:

(i) not based on any information or input generated by the Association prior to or
during the Activity Participants participation in the respective Activity;
(ii) developed independently of other Activity Participants, their Affiliates or the
Association;
(iii) not initiated or developed with the intention to be part of a Deliverable; and
(iv) Declared (in accordance with Clauses 3.3 and 3.4).

6.2 Where an Activity Participant, in accordance with Clause 3.5, has identified an
Essential Patent, which the Activity Participant, or its Affiliates, is unwilling or
unable to license to any Association Participants in accordance with Clause 5,
the Activity Participant will lose its Participation Rights in relation to the
respective Activity and Adopted Deliverable to which an Essential Patent relates,
if any other Activity Participants of the particular Activity, informs the Chairman
within a reasonable period, in writing, that it:

(i) does not accept that the reasons by the Activity Participants in the
relevant Declaration (as required in accordance with in Clause 3.5(ii)
are reasonable and justified; and
(ii) based on its duly justified non-acceptance of these reasons pursuant to
Clause 6.2(i), wishes that the aforesaid Activity Participant shall not be able to
rely on its Participation Rights.

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7 Absence of a Declaration or Failure to Declare

7.1 Where an Activity Participant has elected not to Declare or has failed to Declare any
Essential IPR for a given Activity in accordance with Clauses 3.3, 3.4 and 3.5, the
Activity Participant shall be deemed to have given the Undertaking to Association
Participants in accordance with the terms of Section 5.

8 Disputes regarding Ownership of Essential IPR

8.1 If more than one Activity Participant claims ownership of any Essential IPR, the
Activity Participants claiming ownership shall:

(i) act in good faith when negotiating and resolving the question of
ownership; and
(ii) if they cannot agree on who owns the Essential IPR pursuant to Clause
8.1(i), have the right to seek redress from the courts against each other in
order to resolve the matter,

9 Participation of Associate Members, Rapporteurs and Non-

Members in Activities

9.1 It is acknowledged, that, from time to time, the Association may set up fora,
projects or other groups in which Association Participants and non-members of
the Association may take part.

9.2 Participation of that Associate Member, Rapporteur or non-member in that

particular Activity shall be subject to:

(a) the Associate Member or Rapporteur having expressly committed, by way of

signing up to the appropriate provisions in its associate or rapporteur
membership agreement, to be bound by the provisions set out in these IPR
Regulations for the entire duration of its membership in the Association; or
(b) the Associate Member, Rapporteur or non-member, on a case by case basis
expressly agreeing in writing for each individual Activity (it wishes to participate
in), that, for this particular Activity, it is:
(i) bound by the terms and obligations as set out in these IPR Regulations;
and
(ii) not being granted the benefit of any rights and privileges in excess to
those being granted to any Activity Participant under these IPR
Regulations.

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10 General

10.1 Neither the Activity Participants, nor the Association, make any representations
or give any warranties as to the non-infringement of third party intellectual
property rights, with regards, or in relation, to any provision of these IPR
Regulations.

10.2 All Activity Participants acknowledge and agree that any obligation placed on
(but no rights bestowed upon) an Activity Participant by virtue of:

(a) Clause 4 (Non-Assertion of Essential IPR);

(b) Clause 5 (Licensing of Essential IPR);
(c) Clause 7 (Absence of a Declaration or Failure to Declare); and
(d) Clause 8 (Disputes regarding Ownership of Essential IPR);
with regards to any Essential IPR of the Activity Participant, relevant to this Activity or
Deliverable, but no other Essential IPR, which is:
(i) based on any information or input generated by the Association prior to or
during the Activity Participants participation in the respective Activity;
(ii) not developed independently of other Activity Participants their Affiliates or the
Association; or
(iii) initiated or developed with the intention to be part ofan Activity or Deliverable;
shall survive participation of an Activity Participant in an Activity, even if such Activity
Participant has withdrawn from or ceased to be a Member, Associate Member or
Rapporteur of the Association.
10.3 In the event that any Association Participant or non-member (participating in an
Activity in accordance with Clause 9.2) is in breach of any of its obligations under
these IPR Regulations, the Association reserves the right to take any actions
available to it under its policies, procedures and regulations or at law as it deems
necessary in order to protect the interests of the Association and Association
Participants, including;

(i) any legal actions;

(ii) the exclusion from any Activities; and
(iii) termination of the Association Participant's membership of the Association.
.
10.4 Any dispute arising in relation to these IPR Regulations shall be resolved:

(i) in good faith;

(ii) in a reasonable manner,
(iii) in accordance with the Articles of Association;
(iv) within a reasonable period of time; and
(v) failing that, by seeking redress in a court of a competent jurisdiction.

10.5 The IPR Policy shall be interpreted in accordance with English Law.

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Document Management

Document History
Version Date Brief Description of Change Approval Editor /
Authority Company
3.0.0 October Approved at Plenary 44
2000
3.0.1 December Change owner of document to
2003 GSMA Board
3.1 December Board approved Amendments
2006
4.0 August Board approved Amendments to
GSMA Board Clare Mabin
2013 sections 5.4 and 9.2

It is our intention to provide a quality product for your use. If you find any errors or omissions,
please contact us with your comments. You may notify us at prd@gsma.com

Your comments or suggestions & questions are always welcome.

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