Global Standards Collaboration (GSC) 14
DOCUMENT #:
GSC14-IPR-005
FOR:
Information
SOURCE:
TIA
AGENDA ITEM:
IPRWG Agenda Item 7
CONTACT(S):
Kent Baker / Amy Marasco
Dan Bart
General IPR Policy Issues
Considerations for Developing or Revising
PSO IPR Policies
Kent Baker
TIA DEL
Geneva, 13-16 July 2009
Fostering worldwide interoperability
Issues Overview
On-going debate around “ex ante”
On-going debate around “Open Standards”
Current robustness of the standards system
Greater government oversight needed or desired?
Does a licensing commitment made to an
SSO transfer to a new owner of the patent in
question if the patent is transferred?
Should participants undertake a “voluntary
patent search” and share the results with
the technical committee?
Need for clarity and precision in IPR
policies, does the “practice” follow the
“policy”?
Geneva, 13-16 July 2009
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“Ex Ante Issues”
Term can be applied to different
things
Disclosure that a company has patents
that may contain essential claims
Disclosure of commitment to negotiate a
license
Disclosure of licensing terms
Group discussion of proposed licensing
terms
Timing
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“Ex Ante”
Most SSOs support ex ante disclosure of:
Patents likely to have essential claims
Commitment to offer a license to essential claims
Voluntary disclosure of licensing terms
Almost no SSOs mandate disclosure of licensing
terms or permit group discussion of terms
Legal concerns
Practical concerns
Perceived limited value because
most implementers do not want a license only for
essential claims
Most implementers negotiate cross-license
agreements customized for their requirements
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“Open Standards”
Traditional definitions such as the GSC’s and
ITU-T’s
Some propose a new definition that would mandate
that essential patents are “free to use freely”
Some governments are taking this approach in
connection with eGovernment interoperability
frameworks
Few (if any) standards would meet the new
proposed definition
Potential adverse effects of proposed definition
On well-respected SSOs who have F/RAND-based IPR
policies
On patent holder participation in SSOs
On incentives to innovate in technology areas subject to
standardization
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“Open Standards”
There is no evidence that F/RANDbased standards create a barrier to
implementation or inhibit
interoperability
Study commissioned by the Danish
Parliament
IDC asked to compare 10 SSOs (CEN, Ecma,
ETSI, IETF, ISO, ITU, NIST, OASIS, OMG, and
W3C) as to how “Open” each of them is
See http://www.itst.dk/arkitektur-ogstandarder/Standardisering/Aabnestandarder/baggrunds
rapporter/Evaluation%20of%20Ten%20Standard%20Se
tting%20Organizations.pdf
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Danish Study Conclusions
Rating SSOs as to how “Open” they are is not
either possible or meaningful
“As a result, while the concept of ‘openness’ is central in
the development of standards, this concept has been
implemented in different ways in different standard
setting organizations which renders comparisons difficult.”
“In conclusion there are both similarities and differences
between standard setting organizations. They all have
high scores in the questions about consensus and open
change and they all have focus on ‘openness’ in their
strategies. However, there are differences between
standard setting organizations in terms of ‘openness’ and
certainly in terms of how ‘openness’ is implemented. It
can be difficult to make a distinction of which form of
‘openness’ is the most appropriate.”
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Robustness of the Standards
System
Certain interests are advocating that, if
the current standards system is not
producing truly “Open Standards” that
meet the newer proposed definition,
then the system “must be broken”
They argue that greater government oversight
is needed to force changes they want
The US Government and ANSI have
voiced support for the current system
See
www.ansi.org/news_publications/news_story.aspx?men
uid=7&articleid=2166
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US Government Statement
“In [the U.S. government’s] view, the standard
setting process should be voluntary and marketdriven. Unnecessary government intervention can
impair innovation, standards development, industry
competitiveness, and consumer choice …. The U.S.
government recognizes its responsibility to the
broader public interest by providing financial support
for, and promoting the principles of, our standards
setting system globally.” (Emphasis added.)
The statement also outlined the benefits of open
standards:
The USPTO (representing the US Government) stated
the “United States supports and strongly encourages the
use of open standards, as traditionally defined, that is,
those developed through an open, collaborative process,
whether or not intellectual property is involved.”
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Transfer of the Patent
FTC v. N-Data complaint
Raised issue as to whether a
licensing commitment made by
the original patent holder is
binding on later owners of the
patent – does it transfer with the
patent itself?
Signed licenses may explicitly address
patent transfer
May depend on specific legal jurisdiction
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Different SSOs Are Reviewing the
Issue
Widespread support for the desire for
licensing commitments to bind
subsequent owners of the patent
Challenge is how to make that happen
Should SSOs require patent holders to take a
specific action?
Notify subsequent owner of the commitment?
Bind subsequent owner to the commitment?
Require subsequent owner to bind future
owners?
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Transfer of the Patent
Challenges with policy approaches
To the extent that patent holders are tracking
what commitments they make vis-à-vis specific
patents, it can be viewed as reasonable to
require them to at least provide notice to
subsequent holders
General versus specific notice
Additional challenges when a company says “I
will license anything I have that ends up being
essential on RANDZ (royalty-free) terms”
Not likely that the company will spend money to
conduct patent searches to track what it is
offering to license for free
SSOs typically do not want to discourage RANDZ
commitments
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Transfer of the Patent
Some SSOs have linked any encouragement
or requirement to provide notice to
commitments that apply to specific patents
Some SSOs speak to the need to use
reasonable efforts to provide at least a
general notice to subsequent transferees
(e.g., “these patents may be subject to
licensing commitments made to SSOs”)
SSOs do not typically require patent holders
to undertake an obligation to bind
subsequent transferees
Patent holders concerned about being pulled into
disputes over F/RAND terms between implementers and
subsequent owners of the patent
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Voluntary Patent Search Issue
Can a group of participants undertake a
patent search or patent scan at their own
expense vis-à-vis a standard under
development?
Yes
Issue is to what degree (a) can they share
that information with the technical
committee and (b) what the technical
committee can do with it?
May be helpful in ascertaining who holds possibly
essential patents, especially if they are nonparticipants and not under the IPR policy
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Voluntary Patent Search Issue
May be problematic in that:
Might result in too much information, especially about
patents that are not likely to be essential
Can lead to the SSO having to send out many inquiries to
many patent holders, adding burdens on both sides with
possibly limited value
Potential for error and liability
Technical body may not fully understand
applicability of the patent searches and how
to use them in writing the standard
May lead to debates primarily based upon
interpreting applicability of IPR and not
making decisions primarily based upon
choosing the best appropriate technical
requirements
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Absolute Need for Clarity
Regardless of how an SSO decides it
wants to handle any of these issues or
other IPR-related issues, it is important
that the policy and related guidelines set
clear parameters
Benefits SSO because it can minimize disputes
Benefits participants because they then know what
they have to do in order to comply with the rules
Benefits courts and government regulators so that
they can hold companies accountable in a fair way
Vague policies that do not define requirements and
key words clearly can lead courts to rely on the
“expectations of the participants.”
Courts may look at BOTH ‘Policy’ and actual ‘Practice’
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Thank you!
and
Questions/Discussion?
Fostering worldwide interoperability