Update: 28 September, 2020
Purpose and Definitions
- Purpose. This INATBA Intellectual Property Rights Policy (the “Policy”) applies to and governs the treatment of intellectual property arising from contributions to and the production of deliverables by INATBA. This Policy applies to all Members (as defined below).
- Objective. This Policy has the objective of promoting knowledge creation together with the disclosure and exploitation of contributions and deliverables by INATBA and its Members, and to ensure the fair allocation of rights, reward innovation, and achieve the broad participation of Members.
- Member. “Member” shall have the meaning set forth in the INATBA Articles of Association.
Copyright License to Contributions
- Contributors and Contributions. INATBA coordinates the development of various deliverables, such as technical specifications, engineering notes, reference designs, best practices, working papers, reports, presentations, marketing collateral, and other related material. Any work of authorship intentionally provided to INATBA for potential inclusion in a draft or final INATBA deliverable will be deemed a “Contribution”. The entity or individual making the Contribution is the “Contributor”.
- No Transfer of Ownership. Ownership in each Contribution shall remain with the Contributor and nothing in this Policy shall function to transfer the ownership of Contributor’s Contribution to INATBA.
- General. Each Contributor is deemed to agree to the following with respect to each of their Contributions:
– INATBA holds no duty to publish, use, or otherwise disseminate any Contribution; and
– No information in the Contribution is confidential, and INATBA may freely disseminate any information in the Contribution.
- Copyright License to Contributions. Each Contributor grants INATBA a worldwide, irrevocable, non-exclusive, royalty-free, fully-sublicensable license to reproduce, store, distribute, display, perform, and create derivative works of the Contributions.
- INATBA Copyrights. Subject to the Contributor’s continued copyright ownership in their Contributions, INATBA will own the copyright in any collective works, compilations, joint works or derivative works created in connection with and deriving from INATBA deliverables. INATBA will own the copyright in any works created by INATBA employees or agents.
- Attribution and Moral Rights. Each Contributor, and each individual making a Contribution, waives any moral rights (or similar rights) in INATBA deliverables to the maximum extent permitted by the applicable law. INATBA deliverables will be attributed to INATBA.
- Third Party Intellectual Property. Member and its Affiliates (as defined below) represent and warrant with respect to their Contributions that such Member or Affiliate has the right and authority to submit its Contributions subject to this Policy. Member and its Affiliates further represent and warrant that, subject to the actual knowledge of the Member’s or its Affiliate’s participating representatives, Member’s or Affiliate’s Contributions do not violate or incorporate the copyright or trade secret interests of another party and no claim has been asserted against the Member or its Affiliate in writing (including by email or other electronic means) that Member’s or its Affiliate’s Contribution would violate any intellectual property rights, including patent rights, of another party.
- Warranties/Limitations of Liability. Contributions are provided “AS IS” with no warranties, express or implied, including but not limited to, the warranties of merchantability, fitness for a particular purpose and non-infringement of intellectual property rights. The Contributor shall not be held liable in any event for any damages whatsoever (including, without limitation, damages for loss of profits, business interruption, loss of information, or any other pecuniary loss) arising out of or related to the use of or inability to use the Contribution.
Patent license obligations for Specifications
- Specifications. One type of deliverable that INATBA produces are technical specifications. Once approved as final by the INATBA Board of Directors, these are “Specifications”. Every Member of INATBA is obligated to license certain patent claims in connection with Specifications, as described in this Section 3.
- License Obligation. Each Member agrees that if a patent claim that is owned, controlled or licensable (without additional consideration other than to employees or Affiliates) by that Member or an Affiliate of the Member becomes a Necessary Claim, then the Member will grant, or will cause its Affiliate to grant, a RAND-Z License to any implementer (Member or non-Member) of the relevant Specification who requests such a license, subject to the definitions and exceptions described below.
– An “Affiliate” is any entity that, directly or indirectly, owns, is owned by, or is under common ownership with the Member, as indicated by ownership of more than 50% of the stock or other equity interests entitled to vote for the election of directors or an equivalent governing body of the relevant entity.
– A “Necessary Claim” is any claim in a patent in any jurisdiction that would necessarily be infringed by a compliant implementation of the relevant Specification. A claim is necessarily infringed only when it is impossible to avoid infringing it, because there is no commercially reasonable non-infringing alternative for implementing the normative portions of the Specification. Normative portions are portions of the specification which describe what an implementation or some part of it does to fulfill a part of the specification. All other claims, even if contained in the same patent as Necessary Claims, are not Necessary Claims. Claims which would be infringed only by portions of an implementation that are not expressly specified in the normative portions of the Specification are not Necessary Claims.
– A “RAND-Z License” is a worldwide, non-exclusive license, limited to Necessary Claims, to make, have made, use, import, offer to sell, lease, sell, promote and otherwise distribute the portions of the implementer’s products and services that comply with the normative portions of the Specification, granted on royalty-free and otherwise reasonable and non-discriminatory terms.
- Reciprocity and Defensive Suspension. A non-Member implementer of an INATBA Specification is eligible to be the beneficiary of the license obligation described in Section 3(b) only if the implementer commits to substantially the same license obligation. Accordingly, no Member shall be obligated to license to any non-Member if that party does not agree to make patent licenses available for all INATBA Specifications as set forth in Section 3(b). Further, except as otherwise expressly agreed between particular parties, a licensor may suspend any license granted pursuant to this Policy to any licensee if that licensee or its Affiliate initiates litigation (against the licensor or any other party) that alleges infringement of a Necessary Claim in connection with any INATBA Specification. A party will not be deemed to have initiated litigation if that party files a suit which is defensive based on a patent infringement claim or suit by another party.
- Opt-Out and Review Period. In connection with Specifications developed after the date of this Policy, the license obligation described in Section 3(b) will not apply to patent claims that a Member opts-out. The Board will provide notice and a substantially complete draft version of each Specification to all Members for review no less than 30 days prior to formal approval of the Specification. A Member may opt-out a claim by specifically identifying a particular claim and the applicable portion of the relevant draft Specification in writing (including by email or other electronic means) to the Board prior to the end of the review period. The Member must make such opt-out notification promptly upon becoming aware that the claim potentially may be a Necessary Claim and deciding that they are unwilling to license it, even if such awareness arises prior to the review period.
- Effect of Withdrawal from INATBA. Even after the date a Member formally withdraws from INATBA (the “Withdrawal Date”), a Member will be obligated to grant licenses as described in this Section 3 to those claims that became Necessary Claims prior to the Withdrawal Date, as well as to Necessary Claims that read on future versions of a Specification, limited to those portions of the future version that are substantially the same as in the Specification as it was approved prior to the Withdrawal Date. Otherwise, no new obligations attach post Withdrawal Date.
- INATBA will be permitted to use the name and trademark, including corporate logo (or similar mark), of Members on the INATBA website and in connection with communications about INATBA membership, subject to reasonable use limitations and unless otherwise communicated by the Member to INATBA.
- INATBA Members may use the INATBA name and corporate logo solely to communicate their membership in INATBA and provided thatthe Member shall not use the INATBA name and corporate logo in connection with any communication surrounding any fundraising initiative or in any other matter prohibited under the “INATBA New Member Admissions and Onboarding Policy”.
- The INATBA name and trademarks may not be used to communicate compliance or conformance with any INATBA Specifications or technology, and may not otherwise be used in connection with any Member product or service, except as permitted by an applicable written INATBA license agreement or Board-approved policy.
Scope, Withdrawal Period and Amendments
- Retroactivity. This Policy shall apply retroactively from the date when INATBA was first established, more specifically from 6 March, 2019.
- Assent to terms. Participation in INATBA as a Member indicates that Member’s assent to the terms of this Policy. Any Member that expresses a desire not to be bound by the terms of this Policy must abstain from joining, or withdraw from membership if already a Member as of the date of this Policy, and must not engage in any INATBA activities.
- Withdrawal Period. Members who express a desire not to be bound by the terms of this Policy shall have 45 calendar days from the date INATBA sends a written notice about this Policy to the Member. Failure by a Member to terminate from the INATBA membership within the prescribed time shall confirm that Member’s assent to the terms of this Policy.
- Amendments. The INATBA Board of Directors may amend this Policy at any time in its sole discretion. No amendment to this Policy will be effective in less than 45 calendar days from the date that written notice of such amendment is sent to INATBA Members.