fostering worldwide interoperabilitygeneva, 13-16 july 2009 general ipr policy issues considerations...

Fostering worldwide interoperabilityGeneva, 13-16 July 2009

General IPR Policy Issues

Considerations for Developing or Revising PSO IPR Policies

Kent BakerTIA DEL

Global Standards Collaboration (GSC) 14

DOCUMENT #: GSC14-IPR-005

FOR: Information

SOURCE: TIA

AGENDA ITEM: IPRWG Agenda Item 7

CONTACT(S): Kent Baker / Amy MarascoDan Bart

Fostering worldwide interoperability

Issues OverviewOn-going debate around “ex ante”

On-going debate around “Open Standards”

Current robustness of the standards systemGreater 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”?

2Geneva, 13-16 July 2009


“Ex Ante Issues”

Term can be applied to different things

Disclosure that a company has patents that may contain essential claimsDisclosure of commitment to negotiate a licenseDisclosure of licensing termsGroup discussion of proposed licensing terms Timing



“Ex Ante”Most SSOs support ex ante disclosure of:

Patents likely to have essential claimsCommitment to offer a license to essential claimsVoluntary disclosure of licensing terms

Almost no SSOs mandate disclosure of licensing terms or permit group discussion of terms

Legal concernsPractical 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



“Open Standards”Traditional definitions such as the GSC’s and

ITU-T’sSome 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 frameworksFew (if any) standards would meet the new proposed definitionPotential adverse effects of proposed definition

On well-respected SSOs who have F/RAND-based IPR policiesOn patent holder participation in SSOsOn incentives to innovate in technology areas subject to standardization 5Geneva, 13-16 July 2009


“Open Standards”

There is no evidence that F/RAND-based standards create a barrier to implementation or inhibit interoperabilityStudy 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 isSee http://www.itst.dk/arkitektur-og-standarder/Standardisering/Aabnestandarder/baggrundsrapporter/Evaluation%20of%20Ten%20Standard%20Setting%20Organizations.pdf



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.”



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?menuid=7&articleid=2166



US Government Statement“In [the U.S. government’s] view, the standard setting process should be voluntary and market-driven. 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.”



Transfer of the Patent

FTC v. N-Data complaintRaised 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 transferMay depend on specific legal jurisdiction



Different SSOs Are Reviewing the Issue

Widespread support for the desire for licensing commitments to bind subsequent owners of the patentChallenge 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?



Transfer of the PatentChallenges 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



Transfer of the PatentSome SSOs have linked any encouragement or requirement to provide notice to commitments that apply to specific patentsSome 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



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 non-participants and not under the IPR policy



Voluntary Patent Search Issue

May be problematic in that:Might result in too much information, especially about patents that are not likely to be essentialCan lead to the SSO having to send out many inquiries to many patent holders, adding burdens on both sides with possibly limited valuePotential 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 15Geneva, 13-16 July 2009


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 disputesBenefits participants because they then know what they have to do in order to comply with the rulesBenefits courts and government regulators so that they can hold companies accountable in a fair wayVague 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’



Thank you!

andQuestions/Discussion?

fostering worldwide interoperabilitygeneva, 13-16 july 2009 general ipr policy issues considerations...

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