[M4IF Discuss] MPEG-4 License related issues

[Larry Horn]

Hello, Vikas.
I will be glad to answer your questions. 
Where a license is necessary under patents that are essential to a standard such as the MPEG-4 Visual Standard, MPEG LA's role is to provide access for the convenience of the marketplace under one license to as many essential patents as possible in order to foster interoperability and the widest possible use of the standard.   MPEG LA itself has neither a patent nor a product position; we take the output of the standard as it is developed by the standards-setting body (in this case, MPEG) and put together a licensing product that enables users to have access to as much of the standard's essential intellectual property as possible in one transaction rather than multiple transactions (such as would be required in order to negotiate directly with each individual patent holder).  The License currently includes essential patents owned by 20 patent owners (see http://www.mpegla.com, then go to MPEG-4 Visual).  In order to be included in the License, each patent owner must own one or more patents that MPEG LA's independent patent experts have found to be essential to the use of the standard.  Thus, products using the standard require a license under these patents.  Royalties are paid to MPEG LA, which in turn distributes them to patent owners.
Under the MPEG-4 Visual Patent Portfolio License offered by MPEG LA, the manufacturer and/or seller of decoders and encoders in fully functioning form (in the case of MPEG-4 Visual Internet) and in the product configuration in which they are used by a Consumer (in the case of MPEG-4 Visual Unique Use, MPEG-4 Visual Consumer Recorded Video and MPEG-4 Visual Mobile Video) would pay royalties for the right to make and sell the decoders and encoders.  The one-time royalties for that right are US $0.25 per decoder after the first 50,000 units in a year [for one legal entity but no more than one legal entity in an affiliated group of companies] subject to a total annual cap of $1,000,000 per legal entity and US $0.25 per encoder after the first 50,000 encoders in a year [for one legal entity but no more than one legal entity in an affiliated group of companies] subject to a total annual cap of $1,000,000 per legal entity.  (To the extent MPEG-4 video is offered for remuneration, then the Video Provider that offers the MPEG-4 video for remuneration also pays a royalty for the right to use the decoders and encoders.)
This should provide you with the basic information you need, but if you want to provide me with more information regarding your products (not using the reflector), I will be able to provide you with additional guidance.  I also will be glad to provide you with a copy of the MPEG-4 Visual Patent Portfolio License if you provide me with your reach information.
Best regards,
Larry Horn
Vice President, Licensing
-----Original Message-----
From: Vikas Lekhi [mailto:vikas.lekhi   patni.com]
Sent: Wednesday, January 29, 2024 5:06 AM
To: discuss   lists.m4if.org
Subject: [M4IF Discuss] MPEG-4 License related issues
Hi
Iam Vikas working for a IT services ( Software )firm. I have gone thru the
license agreement documents but am still unclear about IPR related issues
wrto MPEG-4 Video Standards as applicable to Software firms.
Suppose we want to develop MPEG-4 Video Encoder software supporting Simple
Profile @ Level 3 and Core Profile @ Level-2 features and tools. The encoder
will be 	ISO/IEC 14496-2 standard compliant and uses H.263, MPEG algorithms
and few others.
Our Encoder will not use Audio and system standards
The market we look fwd is to sell to the OEM's.
In context of above information can you help me wrto following queries:
1) If we (Patni) develop an mpeg-4 encoder  based on the MPEG-4 Video
ISO standard, who owns the IP for the implementation?
2) Can we sell the source code to another vendor?
If yes, in order to make such a sale, do we need to obtain an IP,
registeration for our source code etc first.
3) Related to 1 - If we want to deploy the solution within a product
then do we need to pay any licensing fee to the original IP holder
(assuming we are not the IP holders) - who is it in this case, is it the
MPEG committee?
4)Similarly related to 2 - if we sell it, does the vendor need to pay
any licensing fee if he wants to deploy it somewhere.
For example if we want to sell the MPEG-4 Encoder to an OEM
(in the form of source code, design documentation etc),in order to make such
a sale, do we need to obtain an IP,registeration for our source code etc
first or does the responsibility lie with the OEM)
I will be grateful for any help provided in this regard
Regards
Vikas Lekhi
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