Evolution of the ANSI Patent Policy

George T. Willingmyre, P.E.

Updated February 2014

This page traces the ANSI Patent Policy from its text as    Excerpted from ANSI Essential Requirements January 2014   to the   earliest records referring to patented items in 1932   of a predecessor organization of ANSI

The Guidelines for Implementation of the ANSI Patent Policy An Aid to More Efficient and Effective Standards Development in Fields That May Involve Patented Technology October 2012 version, 2011 Version  February 2007 version , 1997 version and 1991 version are included

Please refer to the original text for the definitive text and legal references.  The intention here is to gain insight to the evolution of the ANSI  patent policy over time and not to serve as a definitive resource. 

The visitor to this page may find interest in:

Evolution of the IETF Patent Policy

Evolution of the ISO/IEC Patent Policy  

Considerations in Assessing a Standards Developing Organizations Intellectual Property Rights Policies in Advance of Participation     

and  Intellectual Property Rights Policies of selected standards developers  2013

Direct links to the excerpts

2014

January 2008 [new text adding "party authorized to make assurances on its behalf" and the possibility  of either written or electronic formats]

2007 [deletion of requirement that statements must be  "in a form approved by the Institute " and statements of responsibilities and obligations directly on Accredited Standards Developers in contrast to ANSI.  The policy reworded so that it applied to both proposed and and existing American National Standards.  The term "patent claim" replaced the term "patented invention" and text of an assurance option  for "without compensation"  added

 ANSI patent policy -  2006   2004 and 2003 ANSI essential Requirements

ANSI  database of assurances received  on line early 2003

  January 2002  January 2001   April 1998  

March 1997 [deleted requirement to submit terms and conditions to ANSI and that counsel would review such and that a statement of  basis for considering submitted  terms and conditions free of any unfair discrimination was to be recorded

March 1995

September 1993

September 1987

1983 Deleted term "United States Patent" and returned to previous construction "patented invention" 

1977   First and last inclusion of text:  On the advice of  Institute counsel the Executive Standards Council shall determine, prior to approval, whether or not the patent situation would disqualify the standard for consideration

1974 first use of the term "United States Patent" Deletion of text that the Institute or an Institute committee is to  make a determination that  technical reasons justify that a standard requires use of a patented invention however revised to "if it is considered that technical reasons justify this approach" without reference to who is doing the "considering"

1973

1970  an elaboration of the text  from December 1969 that established the essential structure and major elements of current patent policy. First use of  defensive text whose objective was to shield the organization from  litigation over existence,  accuracy and completeness of  statements  and about infringements of patents due to use of the standard. First use of text that  basis for considering submitted  terms and conditions free of any unfair discrimination was to be recorded. First assignment that an ANSI committee would make a determination that technical reasons justify that a standard requires use of a patented invention. First use of phrase, "A license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination."

1969  First available procedural statement addressing patents in standards and  text  that terms and conditions were to be submitted and Institute counsel is to review them and that the Institute actively makes a determination that technical reasons justify  that a standard requires use of a patented invention. 

1959  Concept of patent holder making available licenses on reasonable terms 

1932 First publicly available example of a standards organization addressing the matter  of incorporation  of patents in standards

 

  ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards   Excerpted from ANSI Essential Requirements January 2014 

 

3.0 Normative American National Standards Policies

Every ANSI-Accredited Standards Developer (ASD) shall comply with the normative policies contained in this section. The ASD may choose to: 1) include the text that follows, as  appropriate, in its accredited procedures along with any additional information as required; or 2) submit to ANSI a written statement of full compliance with these policies in addition to policy  statements that satisfy the requirements set-forth in this section.

3.1 ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting an American National Standard (ANS) in terms that include the use of an essential patent claim (one whose use would be required for compliance with that standard)  if it is considered that technical reasons justify this approach.

If an ANSI-Accredited Standards Developer (ASD) receives a notice that a proposed ANS or an approved ANS may require the use of such a patent claim, the procedures in this clause shall be followed.

3.1.1 Statement from patent holder

The ASD shall receive from the patent holder or a party authorized to make assurances on its behalf, in written or electronic form, either:

(a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or

(b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of implementing the standard

either:

(i) under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or

(ii) without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

3.1.2 Record of statement

A record of the patent holderís statement shall be retained in the files of both the ASD and  ANSI.

3.1.3 Notice

When the ASD receives from a patent holder the assurance set forth in 3.1.1 b above, the standard shall include a note substantially as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of any such claim(s) or of any patent rights in connection  therewith. If a patent holder has filed a statement of willingness to grant a  license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license, then details may be obtained from the standards developer.

3.1.4 Responsibility for identifying patents

Neither the ASD nor ANSI is responsible for identifying patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to their attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

  ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards   January 2008 

 

3.0 Normative American National Standards Policies

Every ANSI-Accredited Standards Developer (ASD) shall comply with the normative policies contained in this section. The ASD may choose to: 1) include the text that follows, as  appropriate, in its accredited procedures along with any additional information as required; or 2) submit to ANSI a written statement of full compliance with these policies in addition to policy  statements that satisfy the requirements set-forth in this section.

3.1 ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting an American National Standard (ANS) in terms that include the use of an essential patent claim (one whose use would be required for compliance with that standard) if it is considered that technical reasons justify this approach.

If an ANSI-Accredited Standards Developer (ASD) receives a notice that a proposed ANS or an approved ANS may require the use of such a patent claim, the procedures in this clause shall be followed.

3.1.1 Statement from patent holder

The ASD shall receive from the patent holder or a party authorized to make assurances on its behalf, in written or electronic form [new text adding "party authorized to make assurances on its behalf" and the possibility  of either written or electronic formats] , either: 

(a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or

(b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of implementing the standard 

either:

(i) under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or

(ii) without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination

3.1.2 Record of statement

A record of the patent holderís statement shall be retained in the files of both the ASD and  ANSI 

3.1.3 Notice

When the ASD receives from a patent holder the assurance set forth in 3.1.1 b above, the standard shall include a note substantially as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of any such claim(s) or of any patent rights in connection  therewith. If a patent holder has filed a statement of willingness to grant a  license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license, then details may be obtained from the standards developer.

3.1.4 Responsibility for identifying patents

Neither the ASD nor ANSI is responsible for identifying patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to their attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

  ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards   January 2007  and Excerpted from January 2007 procedures

Text substantially revised and  reformatted and numbered from previous versions

The following revised ANSI Patent Policy represents the consensus of the Patent Group (and the Policy Committee to which it reports, the Intellectual Property Rights Policy Committee) and has been approved by the ANSI National Policy Committee (NPC) to be included in the ANSI Essential Requirements. Additional issues are under consideration by the Patent Group on an ongoing basis and further discussions of such issues may result in additional changes to the Patent Policy in the future.

3.0 Normative American National Standards Policies

Every ANSI-Accredited Standards Developer (ASD) shall comply with the normative policies contained in this section. The ASD may choose to: 1) include the text that follows, as appropriate, in its accredited procedures along with any additional information as required; or 2) submit to ANSI a written statement of full compliance with these policies in addition to policy statements that satisfy the requirements set-forth in this section

3.1       ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting an American National Standard (ANS) in terms that include the use of an essential patent claim (one whose use would be required for compliance with that standard) if it is considered that technical reasons justify this approach.

If  an ANSI-Accredited Standards Developer (ASD) receives a notice that a proposed ANS or an approved ANS may require the use of such a patent claim, the procedures in this clause shall be followed. [

3.1.1 Statement from patent holder

The ASD shall receive from the identified party or patent holder either:

(a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or

(b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of implementing the standard

either: 

(i) under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or

(ii) without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

 [Essentially new wording first used to provide for term "patent claim" and without compensation assurance]]

3.1.2   Record of statement

A record of the patent holderís statement shall be placed and retained in the files of both the ASD and ANSI [new text to replace " of the Institute "

3.1.3   Notice

When the ASD [new text] receives from a patent holder the assurance set forth in a) or b) above, the standard shall include a note as follows: 

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

 

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer. 

3.1.4   Responsibility for identifying patents

Neither the ASD nor ANSI [Revised text]  is responsible for identifying patents for which a license may  be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

 

    ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards 2003  2004  2006
 

3.1       ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed [last use of term 'proposed' ] American National Standard in terms that include the use of a patented item [Last use of this terminology .... replaced by "patent claim" , if it is considered that technical reasons justify this approach.

If the Institute [last use  term 'Institute' ]  receives a notice that a proposed American National Standard may require the use of a patented invention  [Last use of this terminology .... replaced by "patent claim" ], the procedures in this clause shall be followed.  

3.1.1   Statement from patent holder

Prior to approval of such a  proposed [last use of  sole term 'proposed' ] American National Standard, the Institute shall receive from the identified party or patent holder (in a form approved by the Institute) [Last use of this text] either:  assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

 

a)     a license will be made available without compensation to the applicants desiring to utilize the license for the purpose of implementing the standard; or

b) a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination. [Last use of this sole wording ]

3.1.2   Record of statement

A record of the patent holderís statement shall be placed and retained in the files of the Institute.

3.1.3   Notice

When the Institute receives from a patent holder the assurance set forth in a) or b) above, the standard shall include a note as follows:  

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

 

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

 

3.1.4   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

 

 

 

  ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards  2002 

 

Paragraph 1.2.11   ANSI patent policy - Inclusion of Patents in American National Standards  from ANSI Procedures for the Development and Coordination of American National Standards

There is no objection in principle to drafting a proposed  American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute  receives a notice that a proposed  American National Standard may require the use of a patented invention, the procedures in 1.2.11.1 through 1.2.11.4 shall be followed.

1.2.11.1   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the identified party or patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

  1. a license will be made available without compensation to the applicants desiring to utilize the license for the purpose of implementing the standard; or

  2.  a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

1.2.11.2   Record of statement

A record of the patent holderís statement shall be placed and retained in the files of the Institute.

1.2.11.3   Notice

When the Institute receives from a patent holder the assurance set forth in 1.2.11.1 a) or b), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

1.2.11.4   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

 

  1.2.11   ANSI patent policy - Inclusion of Patents in American National Standards  ANSI Procedures for the Development and Coordination of American National Standards January 2001

1.2.11   ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in 1.2.11.1 through 1.2.11.4 shall be followed.

1.2.11.1   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the identified party or patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

  1. a license will be made available without compensation to the applicants desiring to utilize the license for the purpose of implementing the standard; or
  2. a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

1.2.11.2   Record of statement

A record of the patent holderís statement shall be placed and retained in the files of the Institute.

1.2.11.3   Notice

When the Institute receives from a patent holder the assurance set forth in 1.2.11.1 a) or b), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

1.2.11.4   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

    1.2.11 ANSI Patent Policy -Inclusion of Patents in American National Standards   ANSI Procedures for the Development and Coordination of American National Standards April, 1998 

Procedures for the Development and Coordination of American National Standards

1.2.11. ANSI Patent Policy - Inclusion of Patents in American National Standards
There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in 1.2.11.1 through 1.2.11.4 shall be followed.

1.2.11.1. Statement from Patent Holder
Prior to approval of such a proposed American National Standard, the Institute shall receive from the identified party or patent holder (in a form approved by the Institute) either: assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

  1. a license will be made available without compensation to the applicants desiring to utilize the license for the purpose of implementing the standard; or
  2. a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

1.2.11.2. Record of Statement
A record of the patent holder's statement shall be placed and retained in the files of the Institute.

1.2.11.3. Notice
A record of the patent holder's statement shall be placed and retained in the files of the Institute.

When the Institute receives from a patent holder the assurance set forth in (1.2.11.1 (a)) or (b)), the standard shall include a note as follows:

NOTE - The user's attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

1.2.11.4. Responsibility for Identifying Patents
The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.  

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

 1.2.11 ANSI patent policy - Inclusion of Patents in American National Standards  ANSI Procedures for the Development and Coordination of American National Standards March 1997 

1. 2.11   ANSI patent policy - Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in 1.2.11.1 through 1.2.11.4 shall be followed.

1.2.11.1   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the identified party or patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

  1. a license will be made available without compensation to the applicants desiring to utilize the license for the purpose of implementing the standard; or
  2. a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

1.2.11.2   Record of statement

A record of the patent holderís statement shall be placed and retained in the files of the Institute [previous text called for terms and conditions to be submitted to ANSI for review by counsel and for a statement of the basis for considering such terms and conditions free of any unfair discrimination]

1.2.11.3   Notice

When the Institute receives from a patent holder the assurance set forth in 1.2.11.1 a) or b), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the standards developer.

1.2.11.4   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 


  ANSI patent policy - Inclusion of Patents in American National Standards  ANSI Procedures for the Development and Coordination of American National Standards   March 1995  

 

1. 2.11   ANSI patent policy

Inclusion of Patents in American National Standards There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in 1.2.11.1 through 1.2.11.4 shall be followed.

1.2.11.1   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

a)   a license will be made available without compensation to applicants desiring to utilize the license for the purpose of implementing the standard; or

b)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license [last version of text that included this requirement]

1.2.11.2   Record of statement

A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) [last version of text that included this requirement] shall be placed and retained in the files of the Institute.

1.2.11.3   Notice

When the Institute receives from a patent holder the assurance set forth in 1.2.11.1 a) or b), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

1.2.11.4   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

  ANSI patent policy - Inclusion of Patents in American National Standards  ANSI Procedures for the Development and Coordination of American National Standards  September 1993 

 

Annex I  

ANSI patent policy

I.1 Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in Clause I.2  through I.5  shall be followed.

I.2   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

a)   a license will be made available without compensation to  applicants desiring to utilize the license for the purpose of implementing the standard; or

b)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license

I.3   Record of statement

A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

I.4   Notice

When the Institute receives from a patent holder the assurance set forth in I.2.(a) or I.2 (b), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

I.5   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.  

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

   September 1987  ANSI Patent Policy 

Appendix  I  

ANSIís patent policy

I.1   Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in Sections  I.2  through I.5  shall be followed.

I.2   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

1)   a license will be made available without compensation to  applicants desiring to utilize the license for the purpose of implementing the standard; or

2)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license

I.3   Record of statement

A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

I.4   Notice

When the Institute receives from a patent holder the assurance set forth in I.2.(1) or I.2 (2), the standard shall include a note as follows:

NOTE Ė The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

I.5   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.  

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

  1983  ANSI Patent Policy Appendix D

D1   Inclusion of Patents in American National Standards

There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention [return to this text, previous text "United States patent" , the procedures in Sections  D2  through D5  shall be followed.

D2   Statement from patent holder

Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed American National Standard or assurance that:

1)   a license will be made available without compensation to  applicants desiring to utilize the license for the purpose of implementing the standard; or

2)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license.

D3   Record of statement

A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

D4   Notice

When the Institute receives from a patent holder the assurance set forth in D.2.(1) or D.2 (2), the standard shall include a note as follows:

NOTE Ė  [First use of the text " Note - " from previous versions  The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

D5   Responsibility for identifying patents

The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.  

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

      

   1977  ANSI Patent procedure 7.4 

7.4 Patents There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach.

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in Sections  7.4.1  through 7.4.4   shall be followed.

7.4.1  Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any  United States Patent covering any [last use of this text]  invention whose use would be required for compliance with the proposed American National Standard or assurance that:

1)   a license will be made available without compensation to  applicants desiring to utilize the license for the purpose of implementing the standard; or

2)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license. On the advice of  Institute counsel the Executive Standards Council shall determine, prior to approval, whether or not the patent situation would disqualify the standard for consideration.   [last use of this text]

7.4.2  A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

7.4.3  When the Institute receives from a patent holder the assurance set forth in 7.4.(1) or 7.4 (2), the standard shall include a note as follows:

The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

No representation or warranty is made or implied that this is the only license that may be required to avoid infringement in the use of this standard. [Last use of this text]

7.4.4  The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.  

7.4.5 Compliance with the procedures in 7.4.1 through 7.4.4 is mandatory for Institute approval of a proposed standard that may require use of a patented item.   [last use of this text] 

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 


          December 1974  ANSI Patent procedure 7.4

 

7.4 Patents  There is no objection in principle to drafting a proposed American National Standard in terms that include the use of a patented item, if it is considered that technical reasons justify this approach. [no reference to "who" is doing the considering ... previous text identified the "Technical Standards Board"]

If the Institute receives a notice that a proposed American National Standard may require the use of a patented invention, the procedures in Sections  7.4.1  through 7.4.4   shall be followed.

7.4.1  Prior to approval of such a proposed American National Standard, the Institute shall receive from the  patent holder (in a form approved by the Institute) either:  assurance in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any United States Patent [first use of the term "United States Patent" ] covering any invention whose use would be required for compliance with the proposed American National Standard or assurance that:

1)   a license will be made available without compensation to  applicants desiring to utilize the license for the purpose of implementing the standard; or

2)   a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

The terms and conditions of any license shall be submitted to ANSI for review by its counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of terms and conditions of the license.

7.4.2  A record of the patent holderís statement (and a statement of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

7.4.3  When the Institute receives from a patent holder the assurance set forth in 7.4.(1) or 7.4 (2), the standard shall include a note as follows:

The userís attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

By publication of this standard, no position is taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

No representation or warranty is made or implied that this is the only license that may be required to avoid infringement in the use of this standard.

7.4.4 The Institute shall not be responsible for identifying all patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention.

 7.4.5  Compliance with the procedures in 7.4.1 through 7.4.4 is mandatory for Institute approval of a proposed standard that may require use of a patented item. [ this   phraseology slightly rephrased from previous]

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

 

  Technical Operations Manual  May 1973  Patent policy

 

Patents. If it is considered by a Technical Standards Board that technical reasons justify drawing up an American National Standard in terms which include the use of a patented item there is no objective in principle to such a step.

If the Institute receives notice that a proposed American National Standard may require the use of a patented invention, the following procedure shall be followed:

1. Prior to approval of such proposed American National Standard, the Institute shall receive from the patent holder (in a form approved by the Institute) assurance either in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any United States patent covering any invention the use of which would be required for compliance with the proposed American National Standard; or that 

(a) A license will be made available without compensation to applicants desiring to utilize the license for the purpose of implementing the standard or,

(b) A license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

In either event, the terms and conditions of the license shall be submitted for review by Institute counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of the terms and conditions of the license.

2. A record of the patent holder's statement (and of the basis for considering such terms and conditions free of any unfair discrimination) shall be placed and retained in the files of the Institute.

3. When the Institute receives from a patent holder assurance as set forth in 1(a) or 1(b) above with respect to a proposed American National Standard, such standard shall include a note as follows:

"The user's attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

"By publication of this standard, no position in taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and non-discriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

"No representation or warranty is made or implied that this is the only license that this is the only license that may be required to avoid infringement in the use of this standard."

4. The Institute shall not be responsible for identifying all patents under which a license may be required by an American National Standard, or for conducting inquiries into the legal validity or scope of those patents which are brought to its attention.

5. No proposed American National Standard    with respect to which the Institute has received notice that such standard may require the use of a patented invention, shall be approved by the Institute excepted upon compliance with these procedures. [last use of this specific  text]

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

        Patent Procedures  August 1970  Paragraph 86

This version  is an elaboration of the text below from December 1969 and established the essential structure and major elements of current patent policy.  It contains certain practices however that were abandoned in later versions.  

86. If it is considered by a Technical Standards Board that technical reasons justify drawing up an American National Standard in terms which include the use of a patented item there is no objective in principle to such a step. [First use of text adding the role delegated  to a Technical Standards Board considers use of   a patented item in a standard  justified on technical reasons]

If the Institute receives notice that a proposed American National Standard may require the use of a patented invention, the following procedure shall be followed: [note essentially "If ... then" construction "IF" something happens ... then certain procedures apply.]

1. Prior to approval of such proposed American National Standard, the Institute shall receive from the patent holder (in a form approved by the Institute) assurance either in the form of a general disclaimer to the effect that the patentee does not hold and does not anticipate holding any United States patent covering any invention the use of which would be required for compliance with the proposed American National Standard; or that 

(a) A license will be made available without compensation to applicants desiring to utilize the license for the purpose of implementing the standard or,

(b) A license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.   [First use of phrase]

In either event, the terms and conditions of the license shall be submitted for review by Institute counsel, together with a statement of the number of independent licensees, if any, which have accepted or indicated their acceptance of the terms and conditions of the license. 

2. A record of the patent holder's statement (and of the basis for considering such terms and conditions free of any unfair discrimination) [First use of requirement that  the basis for considering submitted terms and conditions free of any unfair discrimination should be made, although not stated whose makes this evaluation] shall be placed and retained in the files of the Institute.

3. When the Institute receives from a patent holder assurance as set forth in 1(a) or 1(b) above with respect to a proposed American National Standard, such standard shall include a note as follows:

"The user's attention is called to the possibility that compliance with this standard may require use of an invention covered by patent rights.

"By publication of this standard, no position in taken with respect to the validity of this claim or of any patent rights in connection therewith. The patent holder has, however, filed a statement of willingness to grant a license under these rights on reasonable and non-discriminatory terms and conditions to applicants desiring to obtain such a license. Details may be obtained from the publisher

"No representation or warranty is made or implied that this is the only license  that may be required to avoid infringement in the use of this standard."

4. The Institute shall not be responsible for identifying all patents under which a license may be required by an American National Standard, or for conducting inquiries into the legal validity or scope of those patents which are brought to its attention.

[First use of defensive explanation of certain responsibilities not being taken  what publication does not mean with respect to patents. ]

5. No proposed American National Standard    with respect to which the Institute has received notice that such standard may require the use of a patented invention, shall be approved by the Institute excepted upon compliance with these procedures [First use of text that links compliance with the procedures and approval of a standard]

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

     Paragraph 84  December 1969  Procedures of US American Standards Institute
First available procedural statement addressing patents in standards

84. Patents  Every effort should be made to avoid the use of patented items in American National Standards.  However a patented item may be included if it would suffer if left out or if only the patented item is available for the intended purpose of the standard.  [Latter Phraseology generally consistent with concept of a patent essential to practice the standard ... later text adds concept   that  use of   a patented item in a standard has been  justified on technical reasons ]

If the Institute determines that a proposed American National Standard requires the use of a patented invention, the following shall be complied with: [Note ACTIVE role of the Institute in determining that a standard requires use of a patented invention]

Prior to approval of a proposed American National Standard (which may require the use of a patented invention, the Institute shall receive from the patent holder (in a form approved by the Institute) [First indication there may be an approved form or format for completing a statement of assurance ] assurance that either:

(1) a license will be made available without compensation to any applicant desiring to utilize the license for the purpose of implementing the standard or

(2) a license will be made available to any applicant(s) under specified terms and conditions that are demonstrably [alternate text: reasonable and non-discriminatory]  nonexclusionary. The terms and conditions of the license in either event, shall be submitted [alternate text: in confidence] for review by Institute counsel with a statement of the number of independent licensees which have accepted, or indicated their acceptance of, the terms and conditions of the license. [First use of text  that terms and conditions were to be submitted and Institute counsel is to review them]

This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

     1959   11.6 Procedures of American Standards Association

No text available subsequent to 1932 and before 1959

11.6 Patents Standards should not include items whose production is covered by patents unless the patent holder agrees to and does make available to any interested and qualified party a license on reasonable terms or unless other unpatented competing items are included within the standards and the patented item would suffer were it left out.

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 

 

  1932 Relation of Patented Designs or Methods to Standards

 

Minutes of Meeting of Standards Council November 30, 1932  Relation of Patented Designs or Methods to Standards   It was reported that the Committee on Procedure, in the meeting of August 17, 1932, had recommended: "That as a general proposition patented designs or methods should not be incorporated in standards. However each case should  be considered on its merits, and if a patentee be willing to grant such rights as will avoid monopolistic tendencies, favorable consideration to the inclusion of such patented designs in a standards might be given." Upon motion, it was unanimously RESOLVED that the recommendation of the Committee on Procedure be incorporated in the revision of PR 27

(This text Copyright by the American National Standards Institute (ANSI), This material may be copied without permission from ANSI only if and to the extent that the text is not altered in any fashion and ANSIís copyright is clearly noted)

 


 

 

 

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