Important: This is a note for guidance, presented to set out the aims and intents of the Weightless licensing regime. It is not intended to replace or supersede in any way the Weightless licensing documents which remain definitive.
Weightless has two licensing regimes. For terminals and related products a “Fair, Reasonable And Non-Discriminatory with Zero royalty” (FRAND-Z) regime is used. For base stations a “Fair, Reasonable And Non-Discriminatory” (FRAND) regime is in place. Both regimes are in force at the same time as relevant to any given deployment situation.
Terminal manufacture is intended, as far as possible, to be royalty free. To this end all Weightless licensees agree not to assert any IPR they have relevant to Weightless terminals against any other Weightless licensee in respect to their terminal development or manufacturing activities. Of course, a non-Weightless licensee may still assert IPR (from outside the Weightless SIG). Because of the non-assert concept it is not necessary for a licensee to identify any IPR they hold that is relevant.
Note that the IPR is in no way “given away”. The licensee can still assert their IPR against non-Weightless licensees or against Weightless licensees in respect of non-Weightless activities.
A licensee gives the right to “Weightless Contracting” to grant a licence to other licensees to make Weightless terminals.
It is worth explaining why the license is structured this way. It would be possible, as with Bluetooth, for a licensee to agree to give another licensee rights to relevant IPR “on request”. However, this could lead to a number of problems. For example, if, say, an operator of a Weightless network was sued for IPR infringement they would need to apply to all other Weightless licensees for a letter or similar showing that they had the rights to use Weightless IP. With thousands of members all potentially seeking such letters from each other, some of whom may no longer be Weightless SIG Members etc., this could become bureaucratically unworkable. Another problem might occur if a licensee sold some of their IPR to another company outside of the Weightless community (i.e. a non Weightless SIG Member) who might then seek to gain royalties from it.
The use of Weightless Contracting is intnded to prevent these problems since any licensee gains a license to all relevant IPR from one single entity.
The licensee effectively passes to Weightless Contracting the guarantee of non-assert for all the relevant IPR they held prior to becoming a licensee and that which they generate whilst a licensee. This non-assert remains in place even if they leave the Weightless SIG (although any IPR generated after they leave is not subject to this agreement). This must be so to protect other Weightless licensees. Otherwise a company could join Weightless, seek to have its IPR inserted into a Weightless technology Standard and then leave and seek to assert that IPR.
So, for example, if a company (“Company A”) joined the Weightless SIG and then sold a patent to a company outside of the Weightless SIG (“Company B”), then if Company B sought to assert rights against this patent it would become clear that it was filed by Company A prior to or during that company’s time as a Weightless licensee. As such, the agreement with Weightless Contracting would show that the rights to assert this IPR were waived and hence it could not be applied.
In summary, it must be remembered that this agreement is a matter of balancing the desire of licensees to exploit their IPR against the desire of licensees not to have others exploit their IPR against them. Licensees give up the rights to assert any relevant IPR they hold against other Weightless licensees in respect of their Weightless terminal development in return for a license to develop and sell Weightless terminal equipment without needing to pay royalties to any other Weightless licensees. The agreement is designed to do this in a manner that minimises what a licensee gives up whilst providing them with the maximum level of protection from other licensees. Its purpose is not to attempt to extract valuable IPR from some companies in order to benefit others.
For those companies for who signing the FRAND-Z agreement proves problematic they can choose to sign a FRAND terminal licence. This does not require them to offer royalty-free IPR to other members but equally does not entitle them to the IPR of others royalty-free. To date only a very small percentage of members have selected this option.
Base station licensing is more conventional. Licensees agree to license other Weightless licences on a FRAND basis. Again, there is no need to identify relevant IPR until such time as a licensee wishes to assert it. The latter would then enter into negotiations with other licensees using the IPR.
It is possible that the Weightless SIG might in future set up an IPR-pool. This would allow all licensees with IPR to declare it and all licensees that needed IPR to take out a single license from the pool. This could simplify negotiations and provide greater certainty. It is not decided yet whether this pool will be established and even if it is established it will not be obligatory for licensees to take part. Those that choose to stay outside of the pool would have to seek royalties independently.
A successfully completed application for membership constitutes acceptance of the terms and conditions of either the FRAND or FRAND-Z Weightless Terminal Licence Agreement as indicated by clicking the relevant checkbox presented during the application process. It is essential that the terms and conditions of the Agreement are fully understood and that the individual completing the application process is fully authorised by the organisation he or she represents to undertake to commit that organisation to the legal obligations set out in the Agreement. By completing an application for Weightless SIG membership and clicking the relevant checkboxes during the application process the registrant agrees that he is authorised to commit the Member organisation to the terms and conditions set out in the relevant Weightless Terminal Licence Agreement and that these have been read and fully understood.
The full text of the FRAND Agreement and FRAND-Z Agrrement are available below: