ETSI

Definition : ETSI

ETSI (the European Telecommunications Standards Institute) is the standards body that develops telecommunications standards in Europe, including the 2G, 3G, 4G and 5G mobile standards within the 3GPP partnership. A French-law association based in Sophia Antipolis, it is one of the three European standardisation organisations recognised by the European Union. Its IPR Policy, governed by French law, is the source of most FRAND undertakings relied upon in standard essential patent litigation.

Why the concept matters

A patent becomes essential to a standard only through the combined effect of a technical constraint and a declaration made to the body that develops the standard. In telecommunications, that body is almost always ETSI. It is to ETSI that proprietors declare their patents, to ETSI that they give the FRAND licensing undertaking, and it is the ETSI IPR Policy that courts in Luxembourg, London, Karlsruhe, Paris or Munich construe when they set the terms of a licence or rule on an application for an injunction. Understanding ETSI means understanding the contractual origin of FRAND.

A French-law association and a recognised European standardisation organisation

Founded in 1988, ETSI is an association governed by the French law of 1 July 1901, with its seat in Sophia Antipolis. Its members are companies, administrations, research centres and universities from around the world. Regulation (EU) No 1025/2012 on European standardisation lists it, together with CEN and CENELEC, among the European standardisation organisations. ETSI also hosts the secretariat of 3GPP, the partnership that writes the specifications of mobile networks, and it is through ETSI that those specifications become European standards.

The IPR Policy

The ETSI IPR Policy is Annex 6 to its Rules of Procedure. Four clauses structure the litigation.

Clause 4.1 requires each member to use its reasonable endeavours, in particular during the development of a standard in which it participates, to inform the institute of essential IPRs in a timely fashion.

Clause 6.1 organises the FRAND undertaking. When an essential IPR is brought to its attention, the Director-General immediately requests the owner to give, within three months, an irrevocable written undertaking that it is prepared to grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions, covering the manufacture, sale, repair and use of compliant equipment and the use of methods. Clause 6.1bis provides that the undertaking runs with the patent on transfer and binds successive assignees.

Clause 12 provides that the Policy is governed by the laws of France.

Clause 15 defines an essential IPR as one which it is not possible, on technical but not commercial grounds, to avoid practising when making or operating equipment complying with the standard, taking into account normal technical practice and the state of the art generally available at the time of standardisation.

Declarations are recorded in the ETSI IPR database, which is available online. They are subject to no check of essentiality or validity: a declaration tells you that an undertaking exists, not that the patent is actually essential.

Consequences of the French-law connection

Because the ETSI Policy is governed by French law, the FRAND undertaking given to the institute is a French-law commitment, whichever court is seised. The UK Supreme Court in Unwired Planet v Huawei accordingly construed the undertaking under French law when it held that it entitled the owner of a global portfolio to insist on a global licence. The firm’s position is that the undertaking is a stipulation pour autrui, a contract for the benefit of a third party: the proprietor promises ETSI, for the benefit of every implementer of the standard, to grant a licence on FRAND terms, and the implementer may rely directly on that promise. This contractual reading gives the implementer’s defence an autonomous basis, independent of competition law, and sheds light on who is bound, and for which territory, by a FRAND determination.

Useful distinctions

ETSI is neither the EPO, which grants European patents, nor the IEEE or the ITU, other standards bodies whose IPR policies follow different regimes. A declaration to ETSI is not a licence: it creates an obligation to negotiate, not a right to practise the patent for free. Nor is the ETSI FRAND undertaking a compulsory licence under the French Intellectual Property Code, which stems from a judicial or administrative decision.

Key takeaways

Every negotiation or dispute over a standard essential patent starts with the ETSI declaration and the undertaking that accompanies it: date, scope, patents and standards covered, transfers that have occurred. French law governs the undertaking, which gives French courts and French practitioners a particular place in the interpretation of FRAND. For the implementer, the declaration is a right to negotiate that must be exercised diligently; for the proprietor, it is a promise whose breach engages its contractual liability.

Sources

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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