Criteria for the Evaluation of a patent policy for a Standards Setting Organization
These criteria are intended to compare and contrast the patent policies of standards setting organizations in a consistent and logical manner. The activity is part of a project of GTW Associates contracted for by the Japan New Energy and Industrial Development Organization in conjunction with the Japan Strategic Program for the Creation, Protection and Exploitation of Intellectual Property
GTW concluded in May, 2002 comments to the US FTC there is diversity in the specific approach to Intellectual property rights policies of standards developers around the world. Such diversity itself does not equate to a major problem. The diversity of IPR approaches within standards setting bodies allows these bodies to "compete" for the business of developing standards based on (among many factors) the power of the applicable IPR policy to attract and hold the interest of key stakeholder participants. There is a balance of the level of risks and costs that that will attract participants to the standards table. At present, it is possible to begin to discriminate among various organizations. However in many cases there is insufficient information to make a truly informed decision. What is critical for such competition is that it occur in full daylight with clarity and transparency. The preparation of a list of criteria for comparison of IPR policies hopefully will represent a step towards such clarity and transparency
The work builds on Intellectual
Property Rights Polices of selected Standards developers by GTW
Associates May 2002;
Intellectual Property Rights as a factor in the development of
Standards by GTW Associates January 1998; Considerations
in assessment a standards developing organization's Intellectual
Property Rights policies in advance of Participating by GTW
Associates June 2002; Antitrust,
Intellectual Property and Standard setting Organizations, 2002
research by Mark A Lemley. University of California at Berkeley; Intellectual
Property Rights Policies (undated) by Andrew Updegrove and A
non-exhaustive list of IPR issues faced by Standards Setting
Organizations (SSO) contributed to the ITU-T
2003 Informal Forum Summit (San Francisco, 23-25 July 2003)
Where may the policy be found?
What other documentation such as guidelines or committee instructions or educational reference manuals or forms or suggested formats is related to the policy and in what way and with what significance?
History: What is the current state of the policy evolution?
Does the policy apply to standards developed under previous policies?
Who (individual or organizational entity) is responsible for maintaining or revising the policy?
What has been the organization's experience with the patent policy? Are there interesting or relevant case histories that demonstrate the merits or weaknesses of any particular part of the policy past or present?
Transparency: How is information about IPR disclosures and related terms made available?
What are any instructions or guidance with respect to documenting calls for disclosure and terms during meetings or balloting? Does the SDO provide public notice and/or solicit disclosure of third-party rights?
What are relevant record retention practices or policies?
Under what country's Laws will be policy be subject to legal interpretation?
Has the policy been the subject of any independent legal analysis such as for example in a court proceeding; government oversight or regulatory review; or voluntary evaluation such as a US Department of Justice business review letter
What is the nature of the commitment of a party to fulfilling the requirements of the policy: contract; condition of membership; understanding? Do the rules apply to individuals or organizations?
Once a commitment has been made, what are, if any, approaches for revising or revoking the commitment (by for example termination of membership or withdrawal from participation)?
What are, if any, cautionary statements about IPR to be included in the introductory material for standards or specific text of a standard where IPR is a consideration?
Are there relevant definition of terms used or referenced in the policy?
What is the IPR subject of the policy?
What is the definition of the IPR (for this case will be constrained to patents) to be covered... essential; granted; pending; published; applied for? How are third party rights treated)
How does the policy address the validity of a disclosure that IPR is essential to a standard? Does the policy contemplate potential abuse of the IPR policy through "spoofing?
Disclosure: How does the policy address "disclosure" of the IPR to be covered?
Is disclosure mandatory or permissive?
Upon whom does any disclosure obligation fall?
What are any differences in treatment between contributors; participants but non contributors; members of the organization, but non participants; outside third parties What activities make one subject to the rule (active participation in the relevant standard, active participation in any standard activity within the SDO, membership in the SDO, participation in SDO activities without membership?)?
In what manner should disclosures be made? Is there a standard form or format or text for disclosure? (How much detail should be disclosed? For patents, must specific claims be pointed out? Must specific parts of a standard be called out?)
At what points in the development of a standard is disclosure
Are there triggering events?
Does the policy address the case of IPR subject to the policy disclosed after a standard has been issued and in use?
Is there discussion of the responsibility of individuals w/r to the responsibility of the organizations the individuals represent?
Are there "consequences" of failing to disclose such as implied or explicit commitments to license on some terms?
Does the policy discuss patent searches?
Licensing: How does the policy address any licensing and terms and conditions the owner of IPR subject to the policy may offer with respect to meeting the policy? Does the policy limit the options for example Is there a standard form or format or text?
How specific must a commitment be (make, sell; distribute, use, etc)?
Are reciprocity considerations addressed?
Are geographical considerations addressed in providing a license to a requestor; in granting a license in any particular region?
Is any commitment limited or irrevocable?
Are there any conditions on the person or entity making the commitment?
What does the policy state about the organization's role if any in facilitating licenses or arranging or evaluating the reasonableness of licenses or conditions or taking a position on validity of claimed IPR?
Disputes and alleged Violations of the Policy:
What is the expected action to occur when there may arise a dispute about an IPR holder's commitment to license upon the agreed upon terms? What if any role is foreseen by the organization? outside the organization?
What are the expected actions to occur within and without the organization when any aspect of the policy is alleged to have been violated? .
What sanctions, if any, apply within the SDO for violations of the policy?
May third party or governmental sanctions apply?
Normative and Informative References: How does the policy address normative and informative references within a standard to other standards?