OPEN IPTV FORUM e.V. IPR Policy
"Approved IPTV Specifications " means the IPTV Specifications (or parts thereof) which have been approved by the Board.
"Background IPR" means Intellectual Property Rights, excluding Foreground IPR, which at the Effective Date or thereafter are developed by, or become owned by, or otherwise are or come into the possession of, a Member and/or its Affiliates independently from its activities as a Member under this Constitution.
"Essential Patent(s)" means any patent(s) and patent application(s), throughout the world, which contains one or more patent claims that are Necessary Claims.
"Foreground IPR" means any new Intellectual Property Rights, excluding Background IPR, developed, invented, discovered, made, originated or created during the course of activities as a Member or Members under this Constitution.
"FRAND Terms" means fair reasonable and non-discriminatory terms and conditions.
"Intellectual Property Rights" or "IPR" means any and all intellectual property rights including, but not limited to, patents, copyrights, trademarks, trade secret rights, inventions, know-how, object and source codes, algorithms, mask works, chip topography rights, utility models, and all improvements and amendments thereof, and all registrations, applications, renewals, extensions, continuations, divisions or reissues thereof now or hereafter in force (including any rights in any of the foregoing).
"IPTV Specifications" means the specifications to be developed by the Members as a part of their activities in the OPEN IPTV FORUM e.V. as the technological solutions for IPTV applications and for the purpose to establish an open IPTV Standard (including portions thereof). The IPTV Specifications intended to be developed are outlined in the Appendix hereto.
"License Review Period " means the period of time defined as "License Review Period" in the OPEN IPTV Procedures.
"Necessary Claims" means (with respect to, as applicable, the IPTV Specifications or Approved IPTV Specifications) only those claims which would necessarily be infringed by implementation of the IPTV Specification or Approved IPTV Specification, as applicable. A patent claim is "necessarily infringed" only when there is no technically reasonable, non-infringing alternative for implementing such IPTV Specification or Approved IPTV Specification (or portion thereof) without infringing the relevant patent claim.
II. Intellectual Property Rights
1. Any Background IPR, including, but not limited to, those made available to the Members for the development of the IPTV Specifications, shall remain the property of the Member owning it. No title to or ownership with regard to such Background IPR shall be transferred to any other Member as a result of this Agreement or of the performance of the OPEN IPTV FORUM e.V. activities hereunder.
2. The Foreground IPR developed; invented, discovered, and made, originated or created by one Member shall be solely owned by such Member. If Foreground IPR jointly owned by two or more Members is an Essential Patent, each such Member shall have the right and obligation to individually license out such Foreground IPR as per the provisions in § II Section 1 provided that the jointly owning Members cannot " within a reasonable period of not less than forty five (45) days from written request by either such Member" reach an agreement through good faith discussions with respect to the FRAND Terms for joint licensing pursuant to § III Section 1. Members agree to divide, whenever possible, jointly owned Foreground IPR into solely owned Foreground IPR.
3. It is the owner's right and obligation to decide whether or not to file applications for registration and protection of patentable inventions and other Intellectual Property Rights forming part of Foreground IPR and bear all costs and expenses associated therewith.
III. Licensing - Right to Use
1. Subject to compliance with the procedure set out in the OPEN IPTV FORUM e.V. Procedures each Member shall grant to all other Members (including their Affiliates) and any third-party who needs to take a license, a non-exclusive, world-wide, non-transferable (except to a successor in interest of all or the relevant part of the business of such other Members or Affiliates) license, on FRAND Terms, under any and all Necessary Claims of such Essential Patents as are owned, controlled or licensable (without need to pay royalties or other consideration to third parties other than its employees) by a Member or its Affiliates now or at any future time, solely to develop and have developed, design and have designed, make, have made, use, sell, offer to sell, import, export or otherwise dispose of the hardware and/or software products or systems fully compliant with the Approved IPTV Specifications, to provide the application and other services fully compliant with the Approved IPTV Specifications, or to operate the telecommunications systems compatible with the Approved IPTV Specifications, provided;
a. that each of such other Members (including its Affiliates) or third-party undertakes to grant back a license under any and all Necessary Claims forming part of such Essential Patents as are owned, controlled or licensable (without need to pay royalties or other consideration to third parties other than its employees) by it and its Affiliates then or at any future time to the first Member (including its Affiliates) on corresponding FRAND Terms; and
b. further that each Member (including its Affiliates) so granting the license re-serves its rights under applicable law to decline to license or continue to license an Essential Patent to another Member (including its Affiliates) or a third-party that has commenced patent litigation involving or relating to the same Essential Patent against it and/or its Affiliate while such patent litigation or dispute is continuing.
For the avoidance of any doubt, the license granted hereinabove does not extend to any portions of the products or systems, the purpose or function of which is not required for compliance with the Approved IPTV Specifications and does not apply to any Necessary Claims against which a Member has raised Licensing Objections pursuant to the procedures set out in the OPEN IPTV FORUM e.V. Procedures.
2. Each Member agrees to continue discussions in good faith on the specific interpretation of FRAND Terms. The definition of FRAND Terms shall not be changed unless all Members agree to such changes in writing.
3. Each Member and Affiliate assign to OPEN IPTV FORUM e.V. any copyright that such Member or Affiliate may have to the content of the Approved IPTV Specifications. Such assignment shall include all the rights and privileges under such copyright, including but not limited to the right to copy, publish and distribute the Approved IPTV Specifications and to propose such Approved IPTV Specifications to standard-setting organizations pursuant to the OPEN IPTV FORUM e.V. Procedures, solely for the purpose of the Objectives and only in accordance with the decision and direction of the Board (which shall be made by a Qualified Majority Decision).
OPEN IPTV FORUM e.V. grants to each Member a license under the copyright contained in the Approved Specification to use such Approved IPTV Specifications solely in connection with the development, design, manufacture (including having manufactured on a subcontract basis), sale, use, or other disposal of hardware and/or software products compliant with the Approved IPTV Specifications, to provide the applications and other services compliant with the Approved IPTV Specifications, or to operate the telecommunications systems compatible with the Approved IPTV Specifications. The foregoing license shall not include any Essential Patent(s) of such Member or Members, which shall be governed by § III Section 1.
4. Except to the extent provided in § III Section 1, § III Section 3, § IV or elsewhere in the Constitution, the Members agree that no patent license, immunity or other right, or any copyright, trademark, trade secret or other intellectual property right, is granted under this Agreement by any Member or its Affiliates to any other Members, their Affiliates, non-members or to the OPEN IPTV FORUM e.V., either directly or by implication, estoppel or otherwise.
1. The Members shall strive for the development of a trademark for the Approved IPTV Specifications.
2. Such trademark shall be owned by the OPEN IPTV FORUM e.V.
3. The OPEN IPTV FORUM e.V. grants to its Members a world-wide, perpetual, irrevocable, non-exclusive and royalty-free license to use the trademark.