Procedural Rules for Advisory Opinion on Essentiality

Procedural Rules for Advisory Opinion on Essentiality

Article 1 (Purpose)

These rules provide for theprocedures necessary to issue an advisory opinion(hereinafter, the “Advisory Opinion on Essentiality”) by the Japan Intellectual Property Arbitration Center (hereinafter, the “Center”) on whether or not a particular patent is essential for implementation of functions and effects as prescribed in a particulartechnical standard(hereinafter, the “Subject Technical Standard”), based on the agreement between the Center and the licensing organization of essential patents of the Subject Technical Standard (hereinafter, the “Licensing Organization”).

Article 2 (Designation of Subject Technical Standard)

Subject Technical Standard on which the Center conducts the procedure for AdvisoryOpinion on Essentialityshall be the technical standards as designated in Appendix 1.

Article 3 (Application Procedure for Advisory Opinion on Essentiality)

(1)The applicant for an Advisory Opinion on Essentialityshall submit a written application in the predetermined form, which includes the following items, to the Center:

(i)the name (or title, hereinafter, the same), domicile (or residence, hereinafter the same), and contact information (telephone number, fax number, e-mail address) of the applicant, and name of the applicant’s representative ifthe applicant is a juridical person;

(ii)the names, domiciles, and contact information (telephone numbers, fax numbers, e-mail addresses) of agents, if any;

Where a person, who is neither an attorney-at-law nor a patent attorney, becomes an agent, the Center’s approvalshall be necessary;

(iii)the gist of the application; and

(iv)the grounds for theapplication.

(2)The grounds for the application as provided in the Item (iv) of the preceding paragraph shall include the followingitems:

(a)file history of the patent (hereinafter, the “present patent”) on which an Advisory Opinion on Essentiality is requested;

(b)explanation of the present patent invention;

(c)explanation of a portion of the Subject Technical Standard (hereinafter, the “Subject Portion”) to which the present patent is alleged to be essential;

(d)comparison betweenthe present patent inventionand Subject Portion;

(e)applicant’s allegationswith respect to common pointsand different pointsbetween the present patent invention and Subject Portion; and

(f)the reasons that implementation of functions and effects of the Subject Portion is impossible without the present patent invention.

(3)The applicant shall attach the following items to the written application:

(i)the certificate of qualification for the applicant’s representativeif the applicantis a juridical person;

(ii)the document which provesan agent’s representative capacity, if an agentis appointed;

(iii)materials which the applicant believesto prove the grounds for the application; and

(iv)in the case where the LicensingOrganization requires, a letter of oath and agreement in the format of Appendix 2 which is designated by such Licensing Organization.

(4)The applicant may submit the written application as provided in Paragraph (1) and the attached documents and materials as provided in the preceding paragraph by electronic method. Provided, where the Center considers it necessary and gives notice to the applicant, the originals thereof shall be submitted.

Article 4 (Appointment of the Panelists)

(1)The Center shall appoint one attorney-at-law and one patent attorney from a list of panelist candidateswhich the Centermaintains at all times (hereinafter, the “list”). This applies to the case where the number of panelists is lacking for reasons of death or resignation of panelists, and similar scenarios.

(2)Where the Center has received a motion from any of panelists, it shall additionally appoint one additional panelist from the list.

Article 5 (Obligation toDiscloseInformation Regarding other Interests)

Apanelist shall, upon its appointment, submit to the applicant and the Center, a written commitment with respect to the panelist’s interests and shall without delay, fully disclose any circumstances likely to give rise to justifiable doubts as to its impartiality or independence where such circumstances exist or has occurred.

Article 6 (Challenge of Panelists)

(1)Where circumstances exist with respect to a panelist that give rise to justifiable doubts as tothe panelist’simpartiality or independence, the parties may request to challenge such panelist.

(2)The Center shall decide that grounds for challenge exist when it finds that grounds for the request as provided in the preceding paragraph exist.

Article 7(Examination and Duration)

(1)The panelists shall, in the case where they consider that thereis a reason to doubt essentiality of the present patent, inform the applicant of such reason and give the applicant an opportunity to express its opinion in written or oral form.

(2)In addition to the case of the preceding paragraph, the panelists may, in their discretion, request the applicant to explain with regard to the matters on which the issuance of Advisory Opinion is requested, and make the applicant express its opinion.

(3)The panelists may, in their discretion, refer to the Licensing Organization, in written or oral form, and ask to explain with regard to the matters which they consider are necessary for issuing an Advisory Opinion on Essentiality.

(4)The proceedings of Advisory Opinion on Essentiality are aimed to finish within two months from the date of receipt of a written application.

Article 8 (Confidentiality Obligation)

The proceedings of Advisory Opinion on Essentialityshall be maintained behind closed-doors, and panelists, panelist candidates, case managers, members of thesteering committee, staff of the Center’s secretariat, the parties, and agents thereof shall not disclose or use the existence, content, and result of the Advisory Opinion on Essentialityorapplicationof Restated Advisory Opinion (including the facts relating to the proceedings of Advisory Opinion on Essentialityand the facts which come to be known through the proceedings ofAdvisoryOpinion on Essentiality), without the consent of all parties to disclosure or use. This shall also apply to such persons who have left these services. Provided, the Center may, in the case where it is necessary for enlightenment and research, etc. of the resolution of disputes relating to intellectual property, disclose the above without specifying specific content such as the names of parties andthe patent subject to the application,etc.

Article 9 (Written Advisory Opinion)

The conclusion of the Advisory Opinion on Essentialityshall be notified in written and a written Advisory Opinionshall be sent to the applicant and the Licensing Organization.

Article 10 (Nature of Advisory Opinion)

The Advisory Opinion on Essentialityis an opinion of the panelists appointed by the Center, and it shall have no binding force on any person except the case where the Licensing Organization may provide that it has binding force on such Licensing Organization and the applicant.

Article 11 (Appeal)

No appeal may be entered against theAdvisory Opinion on Essentiality.

Article 12 (Re-Application)

(1)Notwithstanding the preceding article, an application for Restated Advisory Opinion on Essentialitywith respect to the Advisory Opinion on Essentialitymay be made at any time in the following cases:

(i)Restated Advisory Opinion for affirmation of essentiality;

With regard to the patent which has been opined that it is not essential, in the case where the owner of such patent requests again to opine that it is essential, with new evidences which such patent owner believes to prove the grounds for application.

(ii)Restated Advisory Opinion fornegationof essentiality;

With regard to the patent which has been opined that it is essential, in the case where other persons but the owner of such patent request to opine that it is not essential, on grounds that there are alternative techniques which are possible to implement the function and effect of Subject Portion.

(2)The panelists of the Restated Advisory Opinion as provided in Paragraph (1), Item (ii) shall give an opportunity to such patent owner to submit a written counterargument against the grounds described in a written application for Restated Advisory Opinion, designating an adequate time limit.

(3)The provisions of Article 3, Paragraphs (1), (3), and (4), Articles 4 through 10, and Articles 12 through 14 shall apply mutatis mutandis to theRestated Advisory Opinion. Provided, with regard to the appointment of panelists under Article 4, the panelists who haveconducted the preceding Advisory Opinion on Essentiality shall be appointed as panelists, except the case where unavoidable circumstances exist, and the term “applicant”in Article 7, Paragraph (1) shall be construed as “applicant and such patent owner.”

Article 13 (Withdrawal)

The applicant may withdraw an application for an Advisory Opinion on Essentiality at any time, until the written Advisory Opinionhas been sent to the applicant.

Article 14 (Fees)

(1)The applicant shall, upon its application,pay the fees as provided separately to the Center for each Subject Technical Standard on which the Advisory Opinion on Essentialityis to be conducted.

(2)In the case the fee is not paid, or the fee paid is lacking, the Center may request the parties to pay the shortfall within one week from the date of receipt of notice, and in the case where the applicant does not make such payment within this period, the application may be deemed to be withdrawn.

(3)The fee paid to the Center received shall not be reimbursed, including the case where an application is withdrawn.

Article 15 (Management of Case)

(1)Management of the case of Advisory Opinion on Essentiality shall be conducted by a steering committee or a branch steering committee of the Center (hereinafter, the “SteeringCommittee”) and its office work shall be conducted by a secretariatof the Center.

(2)The Steering Committee shall, when an application for an Advisory Opinion on Essentiality is made, promptly appoint a case manager to manage the case.

(3)The case manager may attend hearings as necessary.

Supplementary Provisions

These rules shall come into force as from April4, 2006.

Supplementary Provisions

These rules shall come into force as from January 9, 2007.

Appendix 1Technical Standards subject to Advisory Opinion on Essentiality by Center

1. Subject Technical Standards relating to Digital Broadcasting Pool

No. / Title of ARIB Standard
ARIB STD-B10 / Service Information for Digital Broadcasting System
ARIB STD-B20 / Transmission System forDigital Satellite Broadcasting
ARIB STD-B21 / Receiver for Digital Broadcasting
ARIB STD-B24 / Data Coding and Transmission Specificationfor Digital Broadcasting
ARIB STD-B25 / Conditional Access Systemfor Digital Broadcasting
ARIB STD-B29 / Transmission System forDigital TerrestrialSound Broadcasting
ARIB STD-B30 / Receiver for Digital Terrestrial Sound Broadcasting
ARIB STD-B31 / Transmission System forDigital Terrestrial Television Broadcasting
ARIB STD-B32 / Video Coding, Audio Coding and Multiplexing Specifications for Digital Broadcasting
ARIB TR-B13 / Operational Guidelines for Digital TerrestrialSound Broadcasting
ARIB TR-B14 / Operational Guidelines for Digital Terrestrial Television Broadcasting
ARIB TR-B15 / Operational Guidelines for Digital SatelliteBroadcasting

Note:MPEG-2 Standard, MPEG-4 Standard, H.264|MPEG4AVC Standard, IEEE1394 Standard, and the portion of Server-type Broadcasting shall be excluded from the scope of the pool.

Appendix 2Format of Letter of Oath and Agreement Designated by LicensingOrganization under Article 3, Paragraph (3), Item (iv)

1. Designation by LicensingOrganization relating to Digital Broadcasting Pool

Letter of Oath and Agreement

by Applicant for Advisory Opinion onEssentiality

The applicant for the Advisory Opinion on Essentiality (hereinafter, the “Applicant”) hereby makes an oath and agrees to the following items, upon its submission of a written application to JapanIntellectualPropertyArbitrationCenter (hereinafter, the “Center”).

(1)Applicant shall agree to Procedural Rules for Advisory Opinion on Essentiality.

(2)Applicant shall use the conclusion of Advisory Opinion on Essentiality described in the written Advisory Opinion which Applicant has received from the Center only for the purpose of establishment of ARIB standard patent pool (hereinafter, the “Pool”) relating to the digital broadcasting.

(3)Applicant shall not disclose or use the written Advisory Opinionwhich Applicant has received from the Center and the conclusion of Advisory Opinion on Essentiality described therein, for any purposes other than participating in the Pool.

(4)Applicant shall make an application with regard to only such patents that Applicant believes valid and essential, and shall make an application for Advisory Opinion on Essentiality in good faith.

(5)Applicant shall agree that a panelist may act as an agent of third party opposing Applicant, in the future, except disputes relating to patentsowned by Applicant on which such panelist has conducted the Advisory Opinion on Essentiality.

IN WITNESS WHEREOF, Applicantshall execute this Letter of Oath and Agreement by the applicant forthis Advisory Opinion on essential patent for one copy, and shall submit it to the Center with the documents as provided in Article 3 of Procedural Rules for Advisory Opinion on Essentiality upon making an application for an Advisory Opinion on Essentiality.

Date:

Applicant: