Patent investigation made by the European Commission concerning STDMA in relation to international standardisation. The STDMA ADS-B US patent nr 5,506,587 has priority date July 1991. The patent covers fundamental functions of ADS-B and GP&C Systems International STDMA project disclose most of the other ADS-B functions before that date. The conclusion is that most of the ADS-B patents filed later are potentially not valid.
Brussels, December 1997.
ICAO VDL Mode 4/STDMA : the relations between patents and standardisation.
The Self-Organised Time Division Multiple Access technique, also called VDL (VHF Digital Link) Mode 4 is a technology, that can potentially be used for providing an air/ground and/or an air/air datalink, as well as navigation and surveillance capabilities.
During the standardisation process of VDL Mode 4/STDMA within ICAO (International Civil Aviation Organisation) and IMO (International Maritime Organisation), questions have been raised concerning how to handle potential intellectual property rights related to technologies that are subject to international standardisation within those UN specialised agencies.
The objective of this paper from the services of the European Commission is to inform the representatives of the Member States participating in the relevant ICAO groups on the relations which exist between patents and standardisation work and on ways that the Community handles similar issues in the context of European Standardisation Organisations. The paper will therefore describe the patent situation surrounding this invention, will inform on Community policies and will conclude with the Commissions preliminary views on the VDL Mode 4/STDMA patent in relation with the ICAO standardisation process.
The patent situation and the ICAO standardisation process
In July 1991, the Swedish company GP&C Systems International filed an international patent application for an invention concerning a data transmission system ("a Position Indicating System") subsequently called VDL Mode 4/STDMA within ICAO and 4S or Automatic Identification System within IMO. Mr. H. Lans is the inventor. The patented system is potentially applicable to all kinds of data transmission. The patent application was an international one, filed on the basis of the Patent Co-operation Treaty (PCT) and covers most countries of the world.
In at least three countries, namely Australia, the United States and Sweden, the patents have been granted by the patent offices, which means that according to the examiners, the invention meets the standards of novelty, inventiveness and industrial applicability. Other patents are expected to be granted in the future.
On the other hand, ICAO has started a standardisation work on the VDL Mode 4/STDMA a couple of years ago. Within the relevant standardisation groups, the question of patents and intellectual property has been continuously mentioned as an obstacle to the success of ICAO standardisation work.
Intellectual property rights and standardisation : The Commission position
Standardisation and the protection of intellectual property rights (IPR) serve different and sometimes conflicting objectives: standardisation aims at diffusing technology in the public interest (documents which are publicly available), while intellectual property rights aim at securing private property protection (a monopoly or at least a privilege granted to an inventor). However, standardization and IPRs often have to co-exist in the same environment, and a right balance has to be found between them. The key aspects to ensure such a balance are related to the notions transparency (the existence and identification of patents should be known before the standard is voted upon; this is of special importance for SMEs) and non discrimination (e.g. the insurance that licenses are going to be available at fair and non discriminatory conditions, in particular for SMEs).
The questions which are brought up in the present case are treated in the Communication from the Commission "Intellectual Property Rights and Standardisation", (COM(92) 445 final), published on 27 October 1992. The rules which should be taken into consideration are laid down in chapter 4, summarized in chapter 6. The Communication sets out a number of principles which should form the basis of any internal rules which standards bodies may wish to elaborate. Of course, those principles can only be applicable at the Community level, but knowledge of them, would be beneficial for a better understanding of the issue examined in this paper.
The principles underlined in this Communication in its final paragraph (§ 6.2) distinguish between obligations of standard-making bodies and obligations of intellectual property right holders. The most relevant parts of those conclusions are given hereafter.
According to the Communication, a European standards-making body should make sure that :
access to a European standard should be given to all persons wishing to use it,
standards are available for use on fair, reasonable and non-discriminatory terms, regardless of whether the users participate in the work of the standard-making body or not,
a standard-making body should do all possible efforts to identify any IPRs before adopting a standard; furthermore work on standardisation should only continue if all known IPR can be licensed,
fair conditions should be provided to the holders of IPRs.
On the other side, IPRs holders should :
make best efforts to identify any IPR which they hold relevant to a standard under development and to confirm or refuse permission for its incorporation in the standard,
offer fair, reasonable and non-discriminatory monetary or non-monetary terms for the licence to use IPR,
treat their eventual agreement for incorporating an IPR in a standard as irrevocable.
In addressing these problems the Community should also take care of the competition rules of the Treaty (art. 85,86) and of its external policy obligations. In particular the Community must ensure that where compliance to a standard is referenced in Community legislation, the contents of this standard are made available to all interested parties on a fair, reasonable and non discriminatory basis. If not, it should take all the measures so as to withdraw recognition under Community law of that standard.
More generally, obligation to ensure availability to all interested parties should be a prerogative of public authorities when they plan to adopt a given standard under a legislative instrument.
In view of those considerations, and making a parallel for aviation, one can understand that a body like ICAO with both a standard-making type of activity and a "regulatory"-like type of activity is perfectly entitled to make requests related to IPRs.
The attitude of the patent holders
Handling of patents and intellectual property rights is common practice in the industry and manufacturing sectors. In principle, the presence of IPRs should not prevent the advancement of SARPs (Standards and Recommended Practices) development if some conditions are met.
Patents have been granted for the invention at stake, which means that after an in-depth examination of the relevant prior art, patent offices have considered that the invention meets the patentability criteria (novelty, inventiveness and industrial applicability). The mere fact that the US patent has been opposed by a US company does not reduce in any way the rights conferred by the patent. Up until the end of the opposition period, the patent is fully valid and effective.
A patent gives to his holder the exclusive rights to prevent third parties not having his consent from the acts of making, using, offering for sale, selling, or importing for these purposes the patented product. This means that in the case of a product or a process incorporating a patented invention, the part of the product or process so protected cannot be copied without authorisation, even by observing the ideas and principles on which it is based, nor can instructions in written form, such as specification or patent description, be used for the purpose of producing a similar or identical result.
However, for the reasons explained in § 3 above, the availability of the technology to all interested parties must be ensured in order to allow standardisation to make progress. According to the following declarations, the conditions expressed in §3 above seem to be satisfied.
The patentee (GP&C Systems International) and the inventor Mr. Lans have declared that: "The conditions defined in the letter dated September 2, 1996 to ICAO and IMO are still valid". On behalf of the owners of the patent, the inventor has indicated that they are prepared to grant licenses to interested manufacturers in accordance with the ITUs Code of practice regarding intellectual property rights (patents) on the basis of "reasonable terms and conditions".
Moreover, the owners of the patent have indicated that if the negotiations for the licensing of the patented technology fail or are regarded as unacceptable by any State, they accept to be subject to international or national arbitration.
Preliminary views of the services of the European Commission
Based on the information made available to them, the services of the European Commission can express their preliminary views on the problem at stake:
It appears from the documents available that the disputed technology is the subject of several patents, some of which are currently under (normal) opposition procedures. Under these procedures, a lot of technical information is already available to the public, including to ICAO (patent documents are all published and patent files are open to inspection by third parties).
From the various letters emanating from the inventor, it appears that the patent holders are prepared to behave in a fair and transparent way, since they repeatedly indicate that if patents filed should become valid and used, it is their objective to grant access to the technology on the basis of licensing agreements, to be negotiated in conformity with international norms and practice applicable to the field.
The general conditions of license agreements are in accordance with common international business practice.
This attitude of the patent holders does not appear to be in contradiction with the Commission Communication, which as mentioned under § 3, suggests that intellectual property rights holders should "offer fair, reasonable and non-discriminatory monetary and non-monetary terms for the licence to use any IPR". The question to know whether in reality the conditions of access offered do meet theses criteria, cannot be answered in abstracto.
In the same Communication, European standard-making bodies are invited to ensure that "fair conditions are provided to the holders of intellectual property rights, especially with regard to the time limits for identifying IPRs and agreeing to their use, and in respect of arbitration mechanisms as to royalty rates." From the various papers available, it does not appear that ICAO has ever submitted to the holders of the patented technology any offer regarding the use of the technology as a standard.
It appear from the declarations of the inventor that to avoid monopolistic situations (and hence competition problems), only non-exclusive world-wide licences for civil aviation and civil maritime applications would be granted.
Intellectual property rights might - depending on selected manufacturing design and implementation - be claimed for parts of the proposed VDL Mode 4 SARPs. The possible presence of such proprietary elements in the STDMA protocols is believed not to be a blocking point to the standardisation work initiated by ICAO (and IMO). Subsequent arrangements arising from patent rights associated with the development of new standards are entirely a matter between the parties concerned, i.e. the patent holders and organisations wishing to exploit the technology.
From the various papers submitted to the Commission services, it therefore appears that the attitude of the patent holders is reasonable and that information provided on the patents could not be considered as unsufficient to cover the needs of a standardisation body such as ICAO or IMO.
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Patent invetigation as MS WORD dokument
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