GS1 MobileCom Intellectual Property Policy

As a user-driven organization, GS1 works with retailers, manufacturers, and hardware, software, and integration solutions providers to create and share intellectual property that will benefit the entire MobileCom Community.

GS1 MobileCom is committed to open standards and systems and has adopted policies that encourage openness and interoperability. The GS1 MobileCom Intellectual Property (IP) Policy ensures that all companies participating in GS1 MobileCom technology activities have open, neutral access to technology information and standards. The agreement guarantees that the technology remains non-proprietary for the benefit of industry as a whole.

Companies with a desire to participate in any MobileCom Activities or Standards Working Groups are required to sign the appropriate GS1 MobileCom Intellectual Property (IP) Policy and forward it to GS1 Global Office. For more information on how to participate in GS1 MobileCom or a Standards Working Group focused on MobileCom Technology, contact your mcomsupport@gs1.org.

Read the GS1 MobileCom IP Policy. GS1 Members may submit the IP Policy by faxing all pages to Attn: MobileCom Admin +1.609 620-0255 or scan and email them to mcomsupport@gs1.org.

Intellectual Property Policy FAQ’s

This document is intended as a general guide to issues addressed in the GS1 MobileCom Intellectual Property Policy. Nothing in this document is intended to amend or alter the terms of the Policy itself.

Why are we being asked to sign the IP Policy?

As a condition of participation in Working Groups where GS1 MobileCom Technology requirements are being discussed, all participants are required to affirm our GS1 MobileCom Intellectual Property Policy. The Policy is intended to foster open communication among participants, and to establish a common understanding among participants of what are their rights and obligations concerning intellectual property which may become necessary in the development of MobileCom Standards/Specifications. The objective of GS1 MobileCom is to obtain commitments from participants that the Necessary Claims contained in Standards/Specifications to which they have contributed will be made available for use on a royalty-free basis to the greatest extent possible.

What is the benefit of having an Intellectual Property Policy?

In the absence of a defined commitment by the Participants to make necessary intellectual property available on a royalty-free basis or under license, it would not be possible for end users to have any degree of assurance they may use GS1 MobileCom Standards/Specifications without possible difficulties negotiating licenses from the Participants who formulated the Specifications. While there may always be some degree of uncertainty as to whether there are any third parties from whom licenses may be required, GS1 MobileCom has determined that obtaining a licensing commitment from the Participants who develop each Standard/Specification is a reasonable measure for providing some degree of assurance to end users contemplating use of a Standard/Specification that at least the Participants have not participated with a hidden agenda.

Why are Participants in business groups required to sign the GS1 MobileCom IP Policy?

There have been recent legal developments under which so-called “business methods” have been deemed patentable subject matter. Because the GS1 Global Standards Management Process (GSMP) is driven in part by business process proposals made by prospective end users, we also request that Participants involved in developing Standards/Specifications also affirm a commitment to the IP Policy relative to any such necessary intellectual property.

What IP is subject to license?

The licensing obligation under the IP Policy is limited only to “Necessary” patent rights. What may be “necessary” is intended to mean only those patent right which a Participant might own, and which are fundamental to a Standard/Specification – i.e. there is no way that a Standard/Specification might be practiced without infringing the patent rights owned by a Participant. These necessary claims are usually referred to as “shall” requirements in a Standard/Specification. More specifically, the patent rights comprise present, pending or hereafter acquired patent claims that would be necessarily infringed by implementing the subject Standard/Specification. Hence, a claim is necessary only when it is not possible to avoid infringement because there is no non-infringing alternative for implementing the Standard/Specification.

Why is the GS1 MobileCom Intellectual Property Policy limited to necessary claims?

GS1 MobileCom encourages independent development of intellectual property based on GS1 MobileCom Standards/Specifications. By limiting licensed patent rights only to what is “necessary” to implement the Standards/Specifications themselves, we fully expect that parties will develop and benefit from exploiting proprietary implementations and improved systems and methods which utilize GS1 MobileCom Standards/Specifications. We encourage the development and use of intellectual property which is built upon a common set of interoperable standards.

Is acceptance of the GS1 MobileCom Intellectual Property Policy akin to a blanket license to a company’s patent portfolio?

There is no blanket royalty-free use or license requirement relative to a Participant’s entire patent portfolio. The IP Policy only applies to patent rights with “Necessary Claims” as defined above in this section.

What if my company does not wish to provide a royalty-free license to its necessary claims?

In the event that a Participant has patent rights with “Necessary Claims” that it does not want to make available on a royalty free basis, the Participant is required to file an IP Declaration stating that such patent rights will not be made available on a royalty-free basis but will be made available on RAND (reasonable and non-discriminatory) licensing terms.GS1 MobileCom provides all Participants with an IP Declaration form with each Working Group Call to Action (CTA) as well as at the commencement of each IP review period. It is the intention of the Working Groups to avoid developing Standards/Specifications that require the use of necessary claims of patent rights that are not available on a royalty-free basis. However, GS1 MobileCom is committed to developing robust specifications and will consider such exceptions

Who receives the license?

The license of necessary claims of patent rights extends to any GS1 Member who wants to implement a Standard/Specification for the purpose of producing systems which are certified, or intended to be certified, as compliant with the Standard/Specification. Subject to the reciprocity provision discussed below, Participants are obligated to license to other GS1 Members patent rights with necessary claims to implement a Standard/Specification. There is no obligation to license patent rights for other purposes, such as for use in connection with systems, or components of such systems which are not related to the overall purposes for which GS1 MobileCom Standards/Specifications are developed. There is no obligation on the part of GS1 Membership to license their IP to non-GS1 Members.

What if there is intellectual property which my organization is not willing to license?

The Policy is intended to encourage Working Group Participants to identify intellectual property which (a) is necessary to the practice of a Standard/Specification, and (b) will not be made available on a royalty-free basis. It is the intention of GS1 MobileCom to avoid the use of intellectual property which a Participant does not want to make available on a royalty free basis. Accordingly, while Participants may identify such intellectual property at any time, and we encourage identification as early as possible, a “last call” procedure is included under which a Participant must identify non-royalty-free patent rights which contains necessary patent claims prior to adoption of a final Specification, and within 30 days of the publication of a Standard/Specification.

Is there an obligation to disclose or identify all intellectual property?

Participants are encouraged not to submit material for inclusion in a Standard/Specification which has been appropriated from third parties. While there is no obligation to search or identify patents owned by others, we would encourage bringing potential third party claims to the attention of GS1 MobileCom, so that such claims can be evaluated for necessity and avoided if possible.

Have larger companies, with many affiliates, been able to sign the IP Policy?

GS1 MobileCom has many large corporations as Participants that have extensive patent portfolios and have signed the IP Policy. Such corporations have found a way to be comfortable with the GS1 MobileCom IP Policy and work with their attorneys in determining their patent licensing policy. During participation in a Working Group, Participants are free to work with their attorneys to determine the relevance of their patent rights to a Standard/Specification being developed.

What if I have valuable intellectual property which my organization would not be willing to make available on a royalty-free basis, but we would be willing to make available on the basis of a royalty?

GS1 MobileCom would prefer that organizations owning patent rights with necessary claims make such patent rights available on a royalty-free basis. However, under the IP Policy, if a Participant in a Working Group is with an organization that wishes to obtain a royalty for use of a necessary claim in their patent rights, the Participant is required to identify the patent rights with the necessary claim and the reasons why the patent rights are necessary to the proposed Standard/Specification, as well as to agree to license the patent rights on a reasonable and non-discriminatory basis. Of course, the Working Groups are encouraged to avoid formulating a Standard/Specification that requires subject matter constituting a necessary claim from patent rights of a Participant, but GS1 MobileCom will consider approval of a Standard/Specification with a know royalty-based patent claim.

How does my organization reserve intellectual property which is not available for license?

Participants not desiring to license necessary claims in patent rights on a royalty-free basis should (a) identify the patent document(s) and claim or claims which define the material which is considered “necessary” to a Standard/Specification, and (b) identify the portion(s) of a Specification which require the use of the patent rights. This information will enable a determination to be made as to whether the patent rights contain a necessary claim and, whether the Standard/Specification can be altered to avoid use of the necessary claim, or whether a reasonable and non-discriminatory licensing commitment is appropriate.

Is there an obligation to search for, or identify, third-party intellectual property?

Can I withdraw from Participating?

Any Participant may withdraw from participation in a Working Group at any time. A Participant may withdraw from participation by terminating the Working Group Declaration (IPP) by giving written notice to GS1 MobileCom. To avoid the possibility of parties making contributions to a Standard/Specification and then attempting to withdraw such contributions after substantial reliance has developed, the licensing commitment under the GS1 MobileCom IP Policy continues for necessary intellectual property which was embodied in a draft Standard/Specification more than 60 days prior to withdrawal from the Working Group and for any contribution to the Standard/Specification prior to the termination date. This time window is intended to provide a further encouragement to parties to identify their non-royalty-free intellectual property during the early stages of Standard/Specification development.

How does my participation in the Global Standards Management Process (GSMP) relate to this IP Policy?

Companies declare their intent to make intellectual property that is necessary for the development of a Standard/Specification, available by taking a positive action to “opt-in” to specific Working Groups under the GS1 GSMP. Each Working Group publishes a Call to Action (CTA) that that forms the scope of the activity of which a participant is agreeing to “Opt In” to. In order for a company to send its representatives to join a Working Group, that company must specifically opt into that Working Group. This allows us to know which company is working on what Standard/Specification and, hence, whose intellectual property might become necessary in the development of that particular Standard/Specification. All Participants in a Working Group where Mobile Commerce requirements are being discussed must sign the GS1 MobileCom IP Policy.

What is the lifespan of a Working Group?

Working Groups operate under an approved scope as documented within the Call to Action (CTA) with stated deliverables. Once the deliverables are achieved the Working Group is disbanded.

What is the procedure for making an IP Declaration when a previously ratified Standard/Specification is modified and placed under a subsequent IP review?

All Participants in a Working Group requesting RAND licensing are required to submit an IP Declaration during the subsequent IP review period to obtain RAND licensing terms. Generally, GS1 Mobilecom will not consider IP Declarations filed against a modified Standard/Specification, unless the Participant had previously filed an IP Declaration against the original Standard/Specification during the appropriate review period. If the Participant has a legitimate reason for not previously submitting an IP Declaration against the original Standard/Specification, GS1 MobileCom will consider the submission. GS1 MobileCom will determine whether or not the reason is legitimate on a case by case basis, taking into account factors such as:

Whether the Working Group Participant was a member of the Working Group during the IP review of the original Standard/Specification,
Whether the new Standard/Specification is materially different from the previous version of the Standard/Specification,
Whether the changes in the new Standard/Specification would require a Participant to file an IP Declaration when it had not previously filed such IP Declaration, and
Any other justification the Participant has for not previously filing the declaration.

IP declarations against a standard/specification shall cover the current and future versions of the standard/specification, limited to new versions subject to the above-described exclusions for new matter. This procedure follows what was intended under IP review policy and has been occurring, as GS1 MobileCom has always encouraged early disclosure of IP issues so such issues could be addressed early in the Standard/Specification formulation and adoption procedure.

What restrictions does the reciprocity clause place on Participants, Members, and non-members?

The Reciprocity clause in the GS1 MobileCom IP Policy states that the patent licenses (whether royalty free or RAND licensing) granted by Participants under Sections 3.1 and 3.4 of the IP Policy will not be effective to any party (particularly an GS1 Member) that does not make patent license grants of the type in Section 3.1 or 3.4 available on substantially equivalent respective terms with respect to the same Standard/Specification as that requiring a license from the Participant. The reciprocity clause limits a Member’s rights without the Member executing the IP Policy, by restricting the license granted by a signing Participant. The patent license grant under Section 3.1 or 3.4 of the GS1 MobileCom IP Policy is not given to non-Members of GS1.