HSA FOUNDATION INTELLECTUAL PROPERTY (“IP”) RIGHTS POLICY
1. Definitions. All capitalized terms that are not otherwise defined in this Intellectual Property Rights Policy (“IPRP”) shall have the meaning defined in the Membership Agreement attached hereto.
1.1 “Encumbered Technology” means technology covered by certain patent claims with respect to which a patent holder is unwilling to grant the Reciprocal License.
1.2 “Final Draft Specification(s)” means a final Draft Specification(s) produced by an HSA Foundation working group or committee that will be forwarded to the Board for Ratification and, upon the discretion of the Board, subsequent public release.
1.3 “IP Disclosure Certificate” means a written Notice delivered to the Board of Directors and the chair of any affected working groups or committees that identifies specific Necessary Patent Claims together with a statement as to whether those Necessary Patent Claims will be licensed to all Members in accordance with the Member Agreement. An IP Disclosure Certificate must identify in writing: (a) the patent holder(s); (b) for each issued patent and published patent application containing a Necessary Patent Claim, and the patent number or publication number, respectively; (c) for a pending unpublished patent application containing a Necessary Patent Claim, and a general description of the technology covered by the application; and (d) reasonable identification of the specific parts of Draft Specification(s) whose implementation may be covered by the Necessary Patent Claims. The IP Disclosure Certificate must contain reasonably sufficient detail so as to enable the HSA Foundation and Members either to exclude the subject inventions from a Draft Specification(s) or to develop a commercially reasonable non-infringing implementation if the corresponding Necessary Patent Claims are not to be licensed under the Member Agreement. An IP Disclosure Certificate may be accompanied by submitting any of the following, in the Member’s sole discretion: (i) Specific License Terms for any Necessary Patent Claims not to be licensed; or (ii) any relevant patent applications in their entirety, including amended and newly added claims, as well as the effective filing date.
1.4 “HSA Foundation Representative” means any employee or contractor of a Member who attends at least one (1) HSA Foundation working group meeting or is otherwise substantially involved in the development of any Draft Specification(s) within the relevant HSA Foundation working group.
1.5 “Managing Director” means the Managing Director of the HSA Foundation.
1.6 “Member” means any Member of the HSA Foundation.
1.7 “Membership Agreement” means the agreement signed by a Member to join the HSA Foundation and to which this Attachment A is attached and incorporated by reference.
1.8 “Notice” means a written notice as defined by the HSA Foundation Membership Agreement.
1.9 “Ratification” means the Board approving a Final Draft Specification(s) for public release as provided in the Bylaws.
1.10 “Reciprocal License” means the license under any Necessary Patent Claims in accordance with the license terms and conditions set forth in the Members’ Member Agreement.
1.11 “Specific License Terms” means a minimal set of terms and conditions that a license must address in order for the HSA Foundation to consider incorporating Encumbered Technology into a Specification(s), provided that the Board has no obligation to accept such license even if it includes all of the Specific License Terms and may withhold such acceptance at its sole discretion. The minimal set of terms and conditions shall include: price (fees and royalties), geographical scope, revocability, whether license is perpetual, definition of licensed patents, scope of license including any restrictions, sublicense conditions (if any), term of license agreement, termination conditions, whether licensor can defensively terminate or suspend license upon suit against them by licensees, and reciprocity. Notwithstanding any of the foregoing, however, in all instances the Specific License Terms shall otherwise be under reasonable and non-discriminatory terms and conditions.
2. Disclosure of Necessary Patent Claims
2.1. HSA Foundation Responsibility. The HSA Foundation shall not be responsible for identifying patent rights for which a license may be required, or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.
2.2. No Member Disclosure Necessary. A Member is not required to disclose a Necessary Patent Claim if the Member commits to license such Necessary Patent Claim according to the terms and conditions of the Reciprocal License.
2.3. IP Disclosure Certificates for Draft Specification(s). If any HSA Foundation Representative of a Member organization has actual knowledge of claims that may be Necessary Patent Claims owned or controlled by that Member with respect to that Member’s Contributions or any other aspect of a Draft Specification(s) that will not be licensed under the Reciprocal License, the HSA Foundation Representative of such Member must submit an IP Disclosure Certificate with the submission of a Contribution or as soon as is reasonably possible. In satisfying the disclosure obligation set forth herein, Members are not required to conduct searches of their patent portfolios, nor are they required to disclose Necessary Patent Claims of other Members or other third party patents. Each Member shall ensure its HSA Foundation Representative understands the foregoing obligation and shall be responsible for the actions and omissions of its HSA Foundation Representative.
2.4. Procedure for IP Disclosure Certificates. The HSA Foundation shall post all received IP Disclosure Certificates on a HSA Foundation website, which is accessible only by Members, promptly after receipt and send an email notification to the Board and all Members.
2.5. IP Disclosure Binding If a Member proposes Specific License Terms in the IP Disclosure Certificate that are subsequently accepted by the HSA Foundation, and are required by the Final Draft Specification(s), then the Member is irrevocably required to grant a license under such Specific License Terms or under terms and conditions that are materially similar to or better than such Specific License Terms for the Necessary Patent Claims.
2.6. Confidentiality of IP Disclosure Certificates. Prior to the date on which a Specification(s) relating to an IP Disclosure Certificate is made public, Members and the HSA Foundation shall not make public the content of any Member’s IP Disclosure Certificate outside of the HSA Foundation. IP Disclosure Certificates received with respect to a particular Draft Specification(s) shall be made public after such Draft Specification(s) has been ratified by the Board.
2.7. Termination of Disclosure Obligations. The disclosure obligations described in this Section 2 for a Draft Specification(s) terminate upon Ratification of the Draft Specification(s) by the HSA Foundation or when a working group or the HSA Foundation formally indicates in writing that work on the Draft Specification(s) has terminated without Ratification by the HSA Foundation.
2.8. No Notice. Each Member agrees that receipt of IP Disclosure Certificates by any Member shall not be deemed to be notice of any patent listed therein for purposes of damages or willfulness.
3. Ratification Periods.
3.1. Notice of Ratification Period. Promptly upon a working group’s or committee’s issuance of a Final Draft Specification(s), the working group chair shall request that the Board issue a Notice of Ratification Period to all Members notifying that an announced period of time not shorter than fourteen (14) days and not to exceed sixty (60) days (the “Ratification Period”) has commenced. The Notice of Ratification Period shall clearly indicate the location of the Final Draft Specification(s) on the HSA Foundation web-site and the deadline for the receipt of any IP Disclosure Certificates from any Member. At the end of the Ratification Period, the Board will vote for Ratification of the Final Draft or establish an IP Committee as defined below.
3.2. Failure to Submit IP Disclosure Certificate. If a Member fails to submit an IP Disclosure Certificate prior to the expiration of an applicable Ratification Period, the Member shall be deemed to have granted the Reciprocal License for that Final Draft Specification(s).
4. Reciprocal License Certificate. At any time during the creation of a Draft Specification(s) or during the Ratification Period for a Final Draft Specification(s), any Member may choose to issue an IP Disclosure Certificate accompanied by a signed certificate (“Reciprocal License Certificate”) certifying Member’s grant of the Reciprocal License for disclosed Necessary Patent Claims for, or expected to be for, a Final Draft. A Reciprocal License Certificate may be accompanied by, in the Member’s sole discretion, the results of any searches conducted by the Member of the Member’s IP, or any publicly available prior art. As an example, a Member may choose to issue a Reciprocal License Certificate for a Contribution that it wishes to see incorporated into a Draft Specification(s) to assist the working group in deciding whether to incorporate that Contribution, but is not required to do so.
5. Existing Specification(s).
5.1. New Member Reciprocal License Grant. By signing and submitting a Membership Agreement, a new Member agrees to grant a Reciprocal License for all Specification(s) as of the joining date of the Member, unless, within sixty (60) days of the submission of the Agreement, the Member submits IP Disclosure Certificates as set forth herein.
5.2. Member Patent Purchase. An existing Member purchasing a patent agrees to grant the Reciprocal License for all Specification(s), unless, within sixty (60) days after purchase of the patent the Member submits an IP Disclosure Certificate as set forth herein, which excludes the obligation to grant a Reciprocal License for the patent. After such period any non-excluded Necessary Patent Claims that shall be deemed to be licensed under the Reciprocal License.
6. Member Initiated Disclosure Request.
6.1. Member Request. A Member may, in good faith, request in writing that the Managing Director issue a written request from the Board delivered to another Member requesting that the other Member issue an IP Disclosure Certificate for specific patent or patents owned or controlled by that Member relevant to a Draft Specification(s) being discussed in a working group (“Disclosure Request”). For clarification, the Disclosure Request must specifically identify the respective patent or patents by providing the corresponding patent numbers. Further, the number of patents included in any Disclosure Request must be reasonable, and the Board shall act in good faith when issuing any particular Disclosure Request or combination of Disclosure Requests. A Disclosure Request is subject to approval by the Board. If approved, the Disclosure Request shall be sent as a Notice by the Managing Director on behalf of the HSA Foundation to the applicable Member and shall include the HSA Foundation’ reasons for making the request, the Draft Specification(s) in question, and any relevant meeting minutes and other documents.
6.2. IP Disclosure Certificate in Response to a Disclosure Request. Any HSA Foundation Representative in a Member organization who has received from the Managing Director a Disclosure Request with respect to a Draft Specification(s), or any person in a Member organization who has received, either directly or indirectly, a Disclosure Request from a HSA Foundation Representative of that Member organization; and who has actual knowledge of claims included in the patent or patents specifically identified in the Disclosure Request that are Necessary Patent Claims of that Member organization must issue an IP Disclosure Certificate in accordance with this policy as soon as reasonably possible after receipt of a Disclosure Request.
6.3. Failure to Comply to a Disclosure Request. A Member who does not comply with the disclosure obligations set forth in this section automatically grants the Reciprocal License for any Necessary Patent Claim(s) that the Member failed to disclose. Any attempt to exclude any such undisclosed Necessary Patent Claim(s) is ineffective and null and void.
7.1. No Withdrawal. Contributions, once accepted by the HSA Foundation, may not be withdrawn and a Reciprocal License granted thereto. For clarification and as more clearly set forth in the definition of “Contribution,” a submission that is withdrawn from the Working Group within ten (10) business days of said initial submission shall not be deemed a “Contribution.”
7.2. Survival of License. A Member’s obligations to license made prior to withdrawal from the HSA Foundation shall survive such withdrawal, and shall extend to all licensees, including Members that join the HSA Foundation after the withdrawing Member’s withdrawal.
7.3. Exclusion upon Withdrawal. If a Member withdraws from the HSA Foundation prior to the expiration of an applicable Ratification Period, then the Member may exclude patents that the Member is not already obligated to license before the expiration of an applicable Ratification Period. Failure to exclude will result in the former Member granting the Reciprocal License. Upon withdrawal from the HSA Foundation, the Member may submit at any time any and all IP Disclosure Certificates that the Member chooses to submit pursuant to the foregoing clause of this Section 7, without the obligation to wait until a Ratification Period is defined by the HSA Foundation with respect to any particular Draft Specification(s).
7.4. Rights after Withdrawal. Except as explicitly described in this Attachment A, a prior Member shall have no other obligations to the HSA Foundation or to Members as to technologies or IP rights developed by the Member after its withdrawal from the HSA Foundation.
8. Third Party Technology. Nothing in the Membership Agreement shall compel nor prevent the HSA Foundation from including in Draft Specification(s) or Specification(s) a reference to, or suggestion to adopt or employ, a non-Member technology, whether or not such third party technology must be licensed on a royalty-bearing or royalty-free basis in order to avoid infringement or intellectual and/or proprietary rights, provided that said non-Member technology shall not be required to implement the Specification if it is not licensed on a royalty-free basis.