SMPTE AG 08
Administrative Guideline
Patent Statement
Published - 2023-01-31
SMPTE (the Society of Motion Picture and Television Engineers) is an internationally-recognized standards developing organization. Headquartered and incorporated in the United States of America, SMPTE has members in over 80 countries on six continents. SMPTE’s Engineering Documents, including Standards, Recommended Practices, and Engineering Guidelines, are prepared by SMPTE’s Technology Committees. Participation in these Committees is open to all with a bona fide interest in their work. SMPTE cooperates closely with other standards-developing organizations, including ISO, IEC and ITU. SMPTE Engineering Documents are drafted in accordance with the rules given in its Standards Operations Manual.
This Standards Administrative Guideline forms an adjunct to the use and interpretation of the SMPTE Standards Operations Manual. In the event of a conflict, the Operations Manual shall prevail.
Copyright © The Society of Motion Picture and Television Engineers.
This Administrative Guideline sets forth the Patent Statement that must be completed to accompany submission of a draft Engineering document, or in response to a Patent inquiry concerning a proposed SMPTE Engineering Document.
Normative text is text that describes elements of the design that are indispensable or contains the conformance language keywords: "shall", "should", or "may". Informative text is text that is potentially helpful to the user, but not indispensable, and can be removed, changed, or added editorially without affecting interoperability. Informative text does not contain any conformance keywords.
All text in this document is, by default, normative, except: the Introduction, any section explicitly labeled as "Informative" or individual paragraphs that start with "Note:"
The keywords "shall" and "shall not" indicate requirements strictly to be followed in order to conform to the document and from which no deviation is permitted.
The keywords, "should" and "should not" indicate that, among several possibilities, one is recommended as particularly suitable, without mentioning or excluding others; or that a certain course of action is preferred but not necessarily required; or that (in the negative form) a certain possibility or course of action is deprecated but not prohibited.
The keywords "may" and "need not" indicate courses of action permissible within the limits of the document.
The keyword "reserved" indicates a provision that is not defined at this time, shall not be used, and may be defined in the future. The keyword "forbidden" indicates "reserved" and in addition indicates that the provision will never be defined in the future.
Unless otherwise specified, the order of precedence of the types of normative information in this document shall be as follows: Normative prose shall be the authoritative definition; Tables shall be next; then formal languages; then figures; and then any other language forms.
The following documents are referred to in the text in such a way that some or all of their content constitutes requirements of this document. For dated references, only the edition cited applies. For undated references, the latest edition of the referenced document (including any amendments) applies.
No terms and definitions are listed in this document.
In accordance with the provisions of Section 9.1 of the SMPTE Standards Operations Manual, a completed SMPTE Patent Statement is required when a draft new Engineering Document is submitted to SMPTE on behalf of a company or other outside organization. Additionally, following the notice of possible Essential Claims, the Director of Engineering shall perform a Patent Inquiry, requesting the reported owner of the intellectual property in question to complete a SMPTE Patent Statement if the owner considers that it does own or control patents or pending applications likely to include Essential Claims for implementation or use of the Engineering Document.
Patent statements shall be submitted on the form which is available at Element a, in Annex B
For the convenience of the person completing this Patent Statement, Section 9.1 of the SMPTE Standards Operations Manual, in force as of January 31, 2015, is reproduced in Annex A.
(copied in its entirety from the SMPTE Standards Operations Manual, in force as of January 31, 2015)
9. Intellectual Property & Confidentiality Policy 9.1. Patent Policy Engineering Documents may include technology that is subject to Essential Claims (see section 9.1.2) but only if all known patent holders are prepared to agree to terms that are “Reasonable and Non-Discriminatory” (RAND) for all Essential Claims. All Engineering Committees and Groups, as described in section 3, are entitled to give preference to technologies that are believed to be free of Essential Claims or for which a free-of-charge license will be available, provided any such solution is believed to be technically adequate. A Committee shall not discuss or otherwise consider specific licensing terms for such technologies. It is important that, whenever possible, Committees are able to make a choice of technology based on all relevant information, including the existence, or potential existence, of any Essential Claims that may encumber a technology under consideration. This Policy imposes an obligation on all Committee Participant Members and Observer Members (Members) and Guests, in accordance with section 9.1.4, to notify the Technology Committee Chair, as early as possible in the development process if they are aware, based on their actual personal knowledge, of patents or patent applications, anywhere in the world, that might contain Essential Claims to a technology being proposed for inclusion in an Engineering Document. 9.1.1. Notice to Meetings At the start of each meeting the Chair shall read a statement in a form approved by the Standards Committee reminding Members and Guests of the obligations imposed by this Policy. 9.1.2. Essential Claims An Essential Claim is “essential” to an Engineering Document only if it is necessarily infringed by implementing the Normative Text of that Engineering Document and is “necessarily infringed” only when there is no commercially-reasonable non-infringing alternative for implementing the Engineering Document. Essential Claims to an Engineering Document exclude those essential to enabling technologies, which are those technologies that may be necessary to make or use any implementations but are not expressly set forth in the Engineering Document. Essential Claims to an Engineering Document also exclude claims essential to any Normative Reference included in the Engineering Document. 9.1.3. Patent Statement to Accompany Engineering Document Submission from External Organizations A completed SMPTE Patent Statement is required when a draft new Engineering Document is submitted to SMPTE on behalf of a company or other outside organization. The Patent Statement shall be made by the company or organization using the form approved by the Standards Committee and shall include the information required on that form. A Technology Committee may agree by Administrative Vote to consider a draft document, or contribution to a draft document, without a Patent Statement, provided assurance is received from the submitter that the Patent Statement will be provided within 45 days. If no Patent Statement is received within 45 days of the submission, the Technology Committee Chair shall inform the Standards Vice President, who may suspend work on the submission. A Member or Guest making any contribution to the Normative Text of a proposed Engineering Document shall provide any declaration required under Section 9.1.4. 9.1.4. Declaration of Knowledge of Relevant Intellectual Property This Policy imposes an obligation on all Members and Guests to notify the Technology Committee Chair, as early as possible in the development process, if they are aware, based on their actual personal knowledge, of patents or patent applications that might contain Essential Claims to a technology being proposed for inclusion in an Engineering Document. The requirement to notify the Technology Committee Chair of actual personal knowledge of actual or potential Essential Claims is an ongoing obligation that begins with becoming a Participant Member or Observer Member of a Technology Committee, or attending a meeting as a Guest, and continues through any form of participation in the work or proceedings of the Technology Committee, including any form of participation by electronic means such as receipt of emails. Any required notice shall be given as soon as practically possible and in all cases shall be given within 45 days after the knowledge is obtained and in advance of any vote on the Engineering Document. The notice shall be either in the form of a verbal statement at a meeting, which shall be recorded in the minutes of the meeting, or in written form to the Chair of the responsible Technology Committee. The notice shall include all relevant information available to the Member or Guest, such as patent or application number(s) and owner of the intellectual property, and shall identify the part(s) of the Engineering Document believed to be subject to Essential Claims. The receipt of such a notice shall create a Technology Committee action item for the Director of Engineering, who shall follow the procedures of section 9.1.5 to solicit a Patent Statement from the reported owner of the intellectual property. This Policy does not require any patent search and specifically recognizes that sponsorship of a Member or Guest does not create any obligation to perform a patent search. This Policy recognizes that all Members and Guests act as individuals and that obligations imposed by this Operations Manual apply to the Member or Guest rather than to any sponsoring organization. For this reason, the obligation to disclose is created by the actual personal knowledge of the Member or Guest and applies to any potential Essential Claims known to the Member or Guest, whether or not the patent or patent application is owned by a sponsor. Nothing in this Policy shall impute knowledge of a Member or Guest by reason of employment, sponsorship, or any other association or connection with a patent applicant or holder. This Policy does not require a Member or Guest to form a legal opinion as to the applicability or enforceability of Essential Claims, but does require a disclosure if the Member or Guest has actual personal knowledge of a patent or patent application that, in the good faith judgment of the Member or Guest, is likely to include Essential Claims to implementation of the proposed Engineering Document. It is recognized that, on occasion, this obligation may conflict with terms of employment or contractual agreements. Members and Guests shall use reasonable efforts to obtain clearance to declare any relevant Essential Claims. No Member may support the adoption of an Engineering Document or technology while knowing or believing that undeclared Essential Claims exist. A Member or Guest who cannot obtain clearance to reveal an Essential Claim shall notify the Technology Committee Chair that s/he will cease to participate in discussion of, and withdraw from all Ballots concerning, the proposed document. 9.1.5. Inquiry to Possible Patent Holders Following notice of possible Essential Claims, the Director of Engineering shall perform a Patent Inquiry, requesting the reported owner of the intellectual property in question to complete a SMPTE Patent Statement if the owner considers that it does own or control patents or pending applications likely to include Essential Claims for implementation or use of the Engineering Document. The Patent Statement, in a form approved by the Standards Committee, shall identify whether licensing of any Essential Claims would be available under RAND terms. If no reply is received within 30 days, the Director of Engineering shall repeat the Patent Inquiry. If no reply is received within a further 30 days, the Director of Engineering shall report this to the Technology Committee and no further correspondence with the entity shall be required. 9.1.6. Conduct of Ballots, Votes and Audits with Associated IP Statements When an Engineering Document is Balloted for elevation to FCD, the Director of Engineering shall issue, in conjunction with the Ballot notification, a “Call for Patents” in a form approved by the Standards Committee. The FCD Ballot shall reference any Patent Statements already submitted with respect to the proposed Engineering Document. If a notice of possible Essential Claims has been made as described in section 9.1.4, and if the Director of Engineering has not received an affirmative response to the Patent Inquiry described in section 9.1.5, then the Director of Engineering shall post a Comment against the FCD Ballot regarding the outstanding Patent Inquiry. Receipt of a statement in response to a Patent Inquiry shall be noted as a Comment response and shall resolve the Comment unless the Patent Statement indicates that Essential Claims exist and that there is no RAND assurance. If any entity provides a completed Patent Statement that indicates Essential Claims exist and that there is no RAND assurance, the Technology Committee may either revise the Engineering Document to exclude the protected technology or terminate work on the Engineering Document. If the Technology Committee considers that the completed Patent Statement may be frivolous or invalid it may choose to seek the direction of the Standards Committee. If any entity has failed to respond to a Patent Inquiry and there is no suitable alternative technology, these facts shall be noted as a Comment response, and the Technology Committee may choose to retain the technology in question by conducting a Disposition Vote on the Comment. All relevant Patent Statements, Patent Inquiries, and Disposition Votes shall be part of the Standards Committee Audit. 9.1.7. Patent Statement in Published Documents All published Engineering Documents shall include an appropriate statement, in a form approved by the Standards Committee; calling attention to the possibility that implementation of the Engineering Document may require the use of Essential Claims. 9.1.8. Transfers of Essential Claims (a) Each party submitting a Patent Statement shall agree that it will not transfer, and confirm that it has not transferred, ownership in patents or patent applications having Essential Claims for the purpose of circumventing such party’s obligations under this Policy. (b) Licensing undertakings made pursuant to this Policy shall be interpreted as encumbrances that bind all successors-in-interest. Recognizing that this interpretation may not be enforceable in all legal jurisdictions, any party who has submitted a licensing undertaking according to this Policy who transfers ownership of any patent or patent application having Essential Claims subject to 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. 9.1.9. Essential Claims Revealed After Publication In the event that an Essential Claim is first revealed by a Member or Guest following adoption and publication of a Engineering Document, the owner or controller of the Essential Claim shall be asked to make a licensing commitment to the Essential Claim in the same manner as if it related to technology proposed for adoption by such Member or Guest during the development of the Engineering Document in question. If such request is refused, the Engineering Document in question shall be referred back to the relevant Technology Committee for consideration and possible action. 9.1.10. Irrevocability and Binding Nature of Commitments All commitments made under this Policy shall be irrevocable, except that the owner of an Essential Claim may include a “reciprocity” or “defensive suspension” term in a license to its Essential Claims. For purposes of this policy, (a) reciprocity shall mean that a licensor may require a licensee to provide a reciprocal RAND license with respect to any Essential Claim(s) owned by the licensee with respect to the same Engineering Document, and (b) defensive suspension shall mean that a licensor may revoke a license granted to an implementer if that implementer asserts an Essential Claim (other than under RAND license terms) in connection with the same Engineering Document against the licensor or its Affiliates. An Affiliate of a party shall mean a company or other legal entity which now or, hereafter, controls or is controlled by or is under common control with such party, but any such company or other legal entity shall be deemed to be an Affiliate only as long as such control exists, and for the purposes of this definition, “control” shall mean direct or indirect ownership of more than 50% of the voting power, capital or other securities of the controlled or commonly controlled entity. 9.1.11. Third Party Beneficiaries In the event that any party brings an infringement action against an implementer of an Engineering Document relating to an Essential Claim(s) under such document with respect to which such Essential Claim owner is under a licensing obligation under this Policy, SMPTE shall have no obligation to intervene, but such implementer shall be entitled to assert that it is a third party beneficiary under such licensing obligation. 9.1.12. Survival of Obligations (a) Any disclosure or other obligation that any Member or Guest incurs under this Policy shall continue in force after the Member ceases to be a Member, or the Guest ceases to be a participant, for any reason. However, no Member or Guest shall become subject to any new obligation under this Policy after ceasing to be a Member or Guest. (b) Any licensing obligation incurred by any party under this policy shall continue in force until the expiration of all Patents that include Essential Claims and shall be binding upon successors of ownership and control as specified in 9.1.8. (c) All persons and entities that are intended third party beneficiaries of rights and obligations incurred under this Policy shall remain entitled to enforce the same, notwithstanding any termination, dissolution or winding up of SMPTE.
This annex lists non-prose elements of this document.