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For Immediate Release:
JOINT LICENSING OF MPEG-4 AUDIO PATENTS
2 March 2001, Singapore: The MPEG-4 Industry Forum (M4IF), in the presence of representatives of the MPEG-4 industry worldwide, approved its recommendation of a plan that will allow the provision of fair, reasonable, nondiscriminatory worldwide access under one license to patents essential for implementing the international MPEG-4 audio standard.
As a result of this recommendation, FAY KAPLUN & MARCIN, LLP announces the following:
Any company believing it has patents essential to the normative part of the MPEG-4 Speech profile, Mobile Audio Internetworking profile or High Quality Audio profile and wishing to join the Audio Licensing Committee, is invited to contact the Evaluation Administrator (contact information below) to initiate the submission procedure. Each party interested in submitting patents for evaluation will supply to the Evaluation Administrator by the closing date of the initial phase, a statement confirming its agreement with the objectives and tentative terms of the proposed patent portfolio, along with an indication of the number of patents to be evaluated and the appropriate fee. For each patent submitted, an evaluation fee of US $6,500.00 will be paid to the Evaluation Administrator who will then direct the party to submit the patents and supporting documents directly to the Evaluator (contact information below).
The following is a summary of the proposed plan for licensing MPEG-4 audio patents:
- Objective
To establish a pool of essential worldwide patents necessary for implementation of the MPEG-4 audio standard to provide all MPEG-4 users with fair, reasonable, nondiscriminatory access to this technology under one license.
- Licensed Patents
Essential patents are those necessary for the following profiles of the normative part of the MPEG-4 audio standard:
- Speech Profile
- Mobile Audio Internetworking Profile
- High Quality Audio Profile
- Organization
Formation of the patent pool will require four entities:
First, an Evaluation Administrator collecting evaluation fees from IP holders and making payments to the Evaluator. The Evaluation Administrator will also publicize the patent submission process and initiate patent submission activity.
Second, an independent patent expert Evaluator evaluating patents for essentiality to the MPEG-4 audio standard.
Third, a Licensing Committee consisting of representatives of the owners of essential patents (based on the Evaluators determinations) which will prepare detailed licensing terms and conditions.
Fourth, a Licensing Administrator designated by the Licensing Committee who is granted non-exclusive sublicensing rights under licensed patents, and who actively promotes the licensing program and distributes royalties to the patent owners. The activities of the Licensing Committee and the Licensing Administrator will run independently of M4IF.
- Licensing Details
To be determined by the Licensing Committee.
- Extension of Scope of Licensed Patents
M4IF will continue to provide interested parties with the opportunity to study extension of the licensing arrangement to include other MPEG-4 audio profiles.
- Schedule
Begin patent submissions: 9 Mar 2001.
Close initial phase of patent submissions: 1 May 2001.
Complete evaluation of the first phase of submissions: 1 Jul 2001.
Complete Licensing Committee preparation activity: 1 Aug 2001.
Start Licensing Administrator activity: 1 Sep 2001.
Evaluation Administrator:
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Patrick J. Fay, Esq.
Fay Kaplun & Marcin, LLP
100 Maiden Lane, 17th Floor
New York, NY 10038
Tel.: (212) 898-8870
Fax: (212) 208-6819
Email: M4IF@FKMipLaw.com
www.FKMipLaw.com
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Evaluator:
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Gaetan Prince
Law Offices of Goudreau Gage Dubuc
800 Victoria Square, Suite 3400
Montreal, Quebec
Phone: (514) 397-7602
FAX: (514) 397-4382
http://www.ggd.com
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Note: while M4IF has recommended the course of action described in this press release, it will not play any role in the process.
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