Intellectual property policy
1. Policy Objectives
The CAN in Automation (CiA) organization develops and maintains specifications (CiA specifications). For this aim, a number of bodies have been created within CiA, such as Interest Groups (IG), Special Interest Groups (SIG), and Task Forces (TF).
The intent of the policies embodied herein is to facilitate adoption of CiA specifications while avoiding uncertainty to the extent possible regarding intellectual property claims in the CiA specifications. CiA seeks to encourage the development and exploitation of proprietary technology and innovative approaches of implementing such CiA specifications, while avoiding blocking proprietary claims or monopolization of use of the CiA specification. This CiA Intellectual Property Policy supersedes and replaces any and all prior policies or agreements regarding Intellectual Property Rights in respect of CiA.
- ”Member“ means an entity, an organization or an individual holding membership in CiA.
- “Affiliate” means any entity that directly or indirectly controls another entity via beneficial ownership of more than fifty percent of the voting power or equity in another entity (“Control”), or is controlled by another entity, or is under common Control with another entity, so long as Control exists.
- “CiA Specification” means a specification developed and maintained by CiA or a portion thereof, including draft specifications.
- “Working Group participant” (“WG participant”) means a Member participating in a Working Group. Any Member that performs a single act of participation in a Working Group such as participation in a WG meeting or a WG telephone conference or the submission of a comment or a Contribution to a WG is considered a WG participant of the respective Working Group.
- “Contribution” means any submission of a concept, data, a suggestion or a revision to a Working Group or otherwise to CiA regarding a CiA Specification.
- “Intellectual Property Right” (“IPR”) means any intellectual property right conferred by statute law including applications therefore other than trademark. For the avoidance of doubt rights relating to confidential information, trade secrets or the like are excluded from the definition of IPR.
- “Essential Claims” means all present and subsequently presented claims of an IPR that would be necessarily infringed by implementation of either a mandatory or an optional feature that is defined in a CiA specification. A claim is not essential if there is a viable alternative implementation of the feature. An alternative is not viable if it comes with an undue burden.
- “License” for an essential claim means a nonexclusive, nontransferable, non-sublicensable right to research, develop, make, have made, use, import, market, promote, offer to sell, sell, distribute, have distributed, lease and otherwise commercially exploit at royalty-free (“free”) or fair, reasonable and non-discriminatory (“FRAND”) conditions for the purpose of employing the CiA Specification or CiA Specifications for which the claim is essential (“Relevant CiA specification(s)”). Employment of a CiA Specification includes, but is not limited to, implementation of the Specification as well as researching, developing, making, having made, using, importing, marketing, promoting, offering to sell, selling, distributing, having distributed, leasing and otherwise commercially exploiting products or components of products with an implementation of the Specification. The license is not to be made liable to temporal or regional limitations. The scope of the License is not required to extend to uses not covered by the relevant CiA specification(s).
- By signing a membership application form Member understands, admits and consents to the terms of the CiA IP Policy as a condition of participation in CiA.
- CiA may exclude Members if the participation requirement of Section 3.1 is not met.
- CiA may exclude Members from participation in CiA or individual Working Groups in case of violation of a stipulation herein.
4. Intellectual Property
- Member is invited to disclose all of its patents that potentially include Essential Claims with respect to any CiA Specification and to grant free Licenses of their IPR for Essential Claims to other CiA Members and their Affiliates.
- Member agrees to grant Licenses to CiA Members and their Affiliates on free conditions or, in his/her sole discretion, on FRAND conditions for all Essential Claims. Licenses for an Essential Claim are to be made available for all CiA members that hold membership on or after the date of issuance of an officially approved CiA Specification and their Affiliates.
- Member´s License may be granted under the reservation that it shall not be effective as to any Member that does not grant Licenses for Essential Claims available on substantially equivalent terms (reservation of reciprocity).
5. Working Groups
- WG Participant is required to disclose any IPR known to the WG Participant that potentially includes Essential Claims with respect to any CiA Specification drafted in the respective WG. This obligation extends to participant-owned as well as any other pertinent IPR of which the WG Participant is aware.
- WG participant has an ongoing duty to disclose any IPR he/she is aware of without undue delay (claims must be submitted within two moths of Participants becoming aware to avoid undue delay). There is no obligation to conduct a search for essential claims in WG participant´s IPR portfolio.
- For unpublished IPRs that are to be disclosed under 5.1 sufficient information has to be provided for the Working Group to assess whether there is relevance for any CiA Specification dealt with in the WG. This information may consist of an abstract if sufficient.
- WG Participant agrees to grant free Licenses to other WG Participants for all Essential Claims of his/her IPRs that were not disclosed at least 6 weeks before publication of a relevant CiA Specification. Free Licenses for these Essential Claims are to be made available for all CiA Members and their Affiliates that are WG Participants on or after the date of issuance of the CiA Specification.
- Information discussed in WG is not subject to confidentiality provisions with the exception of Sections 6.2 and 6.3.
- Information on unpublished patents is confidential and Member agrees to maintain such information in confidence.
- Working drafts of CiA Specifications shall not be distributed outside CiA.
- Information disclosed in WG meetings is not to be protected via subsequent IPR filings. Member agrees to give free Licenses for Essential Claims of an IPR to all CiA Members where evidence can be produced that protected subject-matter was disclosed in a WG meeting prior to the filing date of the IPR at which the Member participated or for which the Member got notice, such as, but not limited to, meeting minutes, where the information is mentioned.
By making a Contribution of copyrightable material, including without limitation drawings, compilations of data, software, or text, WG Participant shall grant to any party a worldwide, non-exclusive, royalty-free license to copy, publish, distribute and to make derivative works that are based on or incorporate all or part of the Contribution, for use (a) in developing and publishing the CiA Specification and related materials for which such Contribution was made; (b) in developing and implementing a system compliant with the Specification; and (c) by other standards development organizations, such as ISO, solely for the purpose of adopting the same or a substantially related Specification. Such license shall be revocable with respect to any party, which fails to make the license of this Section or the License of Section 4.1 or 4.2 available.
8. Other provisions
- The obligations defined herein shall be deemed to apply to Member´s Affiliates. Member assumes the responsibility that her Affiliates comply with the stipulations herein. CiA may impose the sanctions of 3.2 and/or 3.3 on the Member in case of violation of an obligation by an Affiliate.
- Member and its Affiliates retain the independent right to grant or withhold a nonexclusive license or sublicense of IPRs containing Essential Claims for use other than in connection with the License granted in section 4. No IPR license, immunity or other right is granted under this Policy either directly or by implication, estoppel or otherwise, other than the agreements to grant Licenses expressly set forth herein.
- Any transfer by a Member to a third party of an IPR having Essential Claims shall include in the transfer agreement a provision that the transfer is subject to the existing obligations of the transferor pursuant to this Policy. A copy of this Policy and the document signed by the Member obligating Member to this Policy shall accompany any such transfer.
- If a Member relinquishes Membership in CiA for any reason, any Licenses provided pursuant to Sections 4 or 5 shall remain in full force and effect as long as the Licensed Claims remain Essential Claims. Notwithstanding a Member’s relinquishment of membership in CiA, Member’s agreement to grant Licenses as provided in Sections 4 and 5 shall remain in full force and effect for (i) Essential Claims to subject matter included in a draft CiA Specification more than (60) days before the date the Member relinquished membership in CiA, which is ultimately included in a final CiA Specification, even if such CiA Specification is finalized after the Member relinquishes membership; and (ii) Essential Claims to a Contribution made by a relinquishing Member while still a Member and which is included in a final CiA Specification.
- CiA may require approval of the FRAND terms proposed by a Member by a majority vote of a panel composed of three members: a first member selected by CiA, a second member selected by the proposing member and a third member selected by a majority vote of the pertinent Working Group Participants. The proposing Member shall bear all costs associated with the activities of such panel. Member agrees to comply with CiA interpretations of this IPR policy, including the decisions of such panel.
- This declaration shall be governed by and construed under the laws of Switzerland.