Timing of IP Disclosure
Method of Disclosure
- Each time patent information is required to be disclosed, WG Members must complete the Declaration form and timely submit it to the WG Chair.
- There is no need to submit new Declaration forms for previously disclosed patents, patent applications, or licenses.
- If a WG Member wants to amend license information on a previously submitted Declaration form, they can do so only if the subsequent Declaration is less restrictive upon prospective licensees than the former Declaration.
- WG Members must submit a Declaration form for each new or otherwise previously undisclosed patent or patent application the VITA Member Company owns, controls, or licenses that contains claims essential to implement a Draft VSO Proposed Standard.
Good Faith and Reasonable Inquiry Obligation
- Disclosures must be based on the WG Member’s good faith and reasonable inquiry into the patents and patent applications the VITA Member Company they represent owns, controls, or licenses. The scope of this inquiry is limited to those patents, patent applications, or licenses that contain claims essential to the Draft VSO Proposed Standard.
- A good faith and reasonable inquiry includes the WG Member using reasonable efforts to identify, contact, and discuss the Draft VSO Proposed Standard with: (1) individuals at the VITA Member Company who are experts in the relevant subject area; and (2) the company’s attorneys responsible for the patent work in the relevant subject area.
- For example, a WG Member could satisfy his or her good faith and reasonable inquiry obligation by: (1) discussing the Draft VSO Proposed Standard with his or her manager and contacting team members involved in the relevant subject matter of the Draft VSO Proposed Standard; and (2) contacting the company’s inside or outside attorneys, as appropriate, responsible for the patent work in the relevant subject area to determine if there are patents, patent applications, or licenses the company owns or controls that may contain claims essential to implement the Draft VSO Proposed Standard.
- This obligation does not require a WG Member to search the VITA Member Company’s patent databases.
Failure to Meet Disclosure Obligations
- If any WG Member does not adequately and timely disclose, the VITA Member Company must license any undisclosed patents or patent applications to the extent essential to implement a Draft VSO Proposed Standard on a royalty free basis and in accordance with the license restrictions in Section 14.4 of the Patent Policy.
- Any VSO member that believes a WG Member or the VITA Member Company they represent has not fulfilled his/her or its obligations under the Patent Policy terms may submit his/her complaint to the WG Chair.
- If the complaint is not resolved within 15 days of notifying the WG Chair, the WG Chair will commence the Arbitration Procedure in Section 14.5 of the Patent Policy.