INTELLECTUAL PROPERTY RIGHTS AS A FACTOR IN THE DEVELOPMENT OF STANDARDS

George T. Willingmyre, P.E.

January, 1998 

Many standards related to high technology fields such as information technology and telecommunications strive to promote compatibility and interoperability among diverse, rapidly changing systems and components. A standard's ability to fulfil this objective depends upon its wide use and adoption in the marketplace. It follows, therefore that the procedures of most formal standards organizations require that there should be no unreasonable impediments for anyone to adopt implement and use a standard. This is straightforward in most instances, but becomes more complicated when there are proprietary intellectual property rights (IPR) necessary to adopt, implement or use the standard.

Standards organizations generally encourage their committees to propose standards that do not require the use of an IPR. But often there are no other solutions. In order to achieve the desired compatibility or interoperability objective, sometimes a committee must select one particular approach perhaps among several proprietary alternatives. This Sophie's choice decision can have dramatic economic consequences for the owners of the IPR.

Businesses invest time and resources in standards committees so that the resulting standards are compatible with or utilize their technology. One potential loser in the standards development situation above may be the owner of the proprietary technology not selected to be standardized. He will not receive the windfall of the increased demand for the technology that may be caused by the standard. However the owner of the successful technology also has also to make a strategic decision. Consistent with the objective of removing disincentives to adoption of a standard, many standards organizations require the owner of any proprietary technology that is essential in order to meet a standard to agree to license the proprietary technology on a non discriminatory basis with reasonable terms and conditions. These policies are intended to provide some protection to companies who will need to license the IPR from the company whose technology is embedded in the standard. In this case, the IPR holder must decide: Will the marketplace demand my technology anyway because it is competitively attractive, or will the benefits of the standards' reference to my technology outweigh the constraints on exploiting our IPRs?

Recent government actions and changes in IPR policies and procedures of important national and international standards organizations significantly impact companies whose IPR might be included in standards as well as those companies who need to license technology in order to implement a standard. Details such as when in the standards development process a participant must legally or ethically disclose his proprietary IPR, the specificity of the wording of the licensing commitment from IPR holders and what is to happen to the standard if an IPR holder does not agree to license his technology are strategic business matters for all companies affected by standards that embed proprietary technology.

In 1996, the Federal Trade Commission (FTC) precluded the Dell Computer Company from enforcing its patent rights in a technology that was required to comply with a standard. The FTC took this action because the company participated in the development of the standard but failed to disclose that its IPR was essential to comply. Further, the company must maintain procedures to assure that it will not fail to disclose such IPRs in future standards development activities or it will lose the rights to those IPRs as well. FTC reasoned that it is well and good for an IPR holder to reap the rewards of an IPR if the marketplace voluntarily selects the innovation, but it is unfair to unreasonably exploit an IPR if that IPR becomes important only because of its status in a standard. FTC concluded that by demanding royalties after the standard was approved, the company unreasonably restrained competition when it did not disclose its IPRs during the approval of the standard. (See FTC Consent Agreement with Dell Computer Corporation)

Proposed revisions to OMB Circular No. A-119, "Federal Participation in the Development and Use of Voluntary Consensus Standards and in Conformity Assessment Activities." define the nature of standards that government agencies are obligated to consider before developing their own procurement or regulatory standards. (See http://www.gtwassociates.com/answers/omb.html.) Agencies will have to explain and justify why they did not use any relevant such "Voluntary Consensus Standard" before proceeding to create a new government standard. The proposed circular defines "voluntary consensus standard" as one "developed or used" by "voluntary consensus standards bodies." A new part of the definition for "voluntary consensus standard" in section 5 (i) contains the requirement that owners of relevant intellectual property have agreed to make that intellectual property available on a non-discriminatory, royalty-free or reasonable royalty basis to all interested parties.

The principle that implementers of a standard should have access to an IPR required to meet the standard on a non-discriminatory, fair and reasonable basis is at the heart of IPR policies of many standards developing organizations. The American National Standards Institute (ANSI), ANNEX 1; The International Organization for Standardization (ISO) and the International Electrotechnical Commission (IEC), ANNEX 2; the International Telecommunications Union (ITU), ANNEX 3; and the Internet Engineering Task Force (IETF), ANNEX 4 all have such policies. However, while sharing similar objectives, the procedures are not the same and the approaches are continually evolving as the organizations adapt them to their own needs and practical experiences.

One of the differences in procedures is the action expected to occur when a company claims that his IPR is necessary to meet the standard, but the IPR will not be made available on a non-discriminatory basis. The treatment in this scenario is important to any company who for whatever reason prefers that a standard NOT refer to his technology. ANSI's policy in such a case is that the standard can not be recognized as an American National Standard (ANS). If such a condition is discovered after the standard is approved, the standard is subject to loose its status as an ANS. For ISO and IEC, work on developing the standard must stop and the standard can not be published unless the relevant ISO or IEC Council expressly authorizes so. If such a condition is discovered after the standard is approved, the matter is "referred back to the relevant technical committee or sub-committee for further consideration." IETF's past policy was that, "ISOC will not propose, adopt, or continue to maintain..." any standard under these conditions. IETF's recently adopted procedure indicates that a notice of the claimed IPR and any assurances of the IPR holder that he will license the technology will be included in the standards documents under review. The IETF process then relies on the approval process itself to make a judgment of whether the IPR holder is licensing the technology on non-discriminatory terms. For example for an IETF specification to achieve the status of a "DRAFT" standard, Section 4.1.2 of RCF 2026 states: Draft Standard:

A specification from which at least two independent and interoperable implementations from different code bases have been developed, and for which sufficient successful operational experience has been obtained, may be elevated to the "Draft Standard" level. For the purposes of this section, "interoperable" means to be functionally equivalent or interchangeable components of the system or process in which they are used. If patented or otherwise controlled technology is required for implementation, the separate implementations must also have resulted from separate exercise of the licensing process."

The fact that the IETF has a requirement for implementation before progress on the standards track means that IETF can qualitatively determine the impact of any IPR constraints. If there are no multiple implementations because of IPR constraints, the technology will not advance,. ITU policy states that in such a case, "...no recommendation can be established." There is discussion within ITU Telecommunications Standardization Bureau of changing their policy to allow more flexibility in publishing a standard in this situation. Those who argue for the change are concerned that an alleged claim of IPR may not be valid, and such a claimant can unfairly manipulate a standard, if he does not agree to license his alleged IPR. By acting on the claim of IPR, a standards developing organization gives credence to the claim when it may not be valid.

Another difference among procedures is the requirement for and specificity of the statement that an IPR holder will agree to license his IPR on non-discriminatory, fair and reasonable terms and conditions. ANSI, ISO/IEC and ITU policies require that such a statement must be on file with the standards organization. IETF's recently approved procedures do not require such a mandatory statement, but the absence of such a statement is likely to influence the comments and approval of an IETF document. ITU (ANNEX 5) and IETF (ANNEX 6) maintain public web sites containing all such statements relative to their standards. ANSI's recently approved policy eliminated a previously required confidential submittal to ANSI of the terms and condition of any such licenses, the number of independent licensees that have accepted the terms and conditions and the patent holder's basis for believing such terms and conditions are free of any unfair discrimination. This additional requirement was found to be burdensome and not rigidly and uniformly enforced. ANSI's Guidelines to its IPR policy (ANNEX 7) state that ANSI's counsel will verify that the information required from the patent holder has been supplied, but will not undertake to evaluate whether the terms and conditions are reasonable and/or "free of any unfair discrimination". Such a decision is the province of the ANSI Board of Standards Review (BSR) (or, on appeal, the ANSI Appeals Board) if the issue is raised during the approval process or in a petition for withdrawal of approval. This potentially places ANSI in the delicate role of adjudicating disputes between an IPR holder and an IPR seeker, with the outcome of a finding that an IPR holder is not licensing according to his promise likely to be the withdrawal of the American National Standard status for the standard. In 1997 ANSI's BSR  found that a standard could proceed to become an "American National Standard" not withstanding an appeal that the owner of essential IPR was not complying with the ANSI policy requirement to be "non-discriminatory." In another case, ANSI's BSR found that a company had not made a sufficient case that its IPR was "essential" to comply with a standard and therfore rejected the company's appeal tha5t ANSI's policy had not been followed.   The IETF's former policy required a rights holder to publish his terms and conditions on the Internet. Such terms had to be judged reasonable, "considering the objective of the ISOC to assure that all members of the Internet community will be able to operate under the standards at a minimal cost." Every such license had to contain a clause automatically modifying the terms of the license to be as favorable as the terms of any other license under the Rights previously or later granted by the Rights Holder. Now, the IETF Executive Director is instructed to attempt to obtain a written assurance from the IPR holder that licenses will be granted on "openly specified, reasonable. Non-discriminatory terms." Claims of IPR; statements of assurances about licenses to be made available; and results of attempts made to secure such assurances are held by the IETF secretariat (and published on the web as noted above).

A third difference among the procedures is the time during the development of a standard at which an IPR holder should disclose his IPR and the time at which a statement of commitment to non-discriminatory fair and reasonable licensing must be made. Several years ago the European Telecommunications Standards Institute (ETSI) proposed an IPR policy that would have required IPR holders to identify and agree to license IPRs that might be the subject of future ETSI standards. Thus just to secure the right to participate in ETSI standards committees required a commitment to license technology that might be adopted. US industry resisted this policy as going too far and ETSI abandoned the proposal. In ANSI's Guidelines for implementing its IPR policy, ANSI suggests procedures to encourage early disclosure and commitments to license, but does not define any time deadline other than that the licensing commitment statement must be obtained before the standard is accepted as an American National Standard. One of the procedures ANSI suggests is the addition of requests for disclosure and commitments to license during the several iterative ballots that are typical of a standards development process. IETF encourages, "all interested parties to bring to its attention, at the earliest possible time," such information. Each IETF standards document contains this invitation. Any contributor to an IETF standards activity represents that he has disclosed the existence of any IPR in the submission that may be reasonably known to him. Formerly, within IETF, an IPR holder had to agree to the non-discriminatory licensing agreement at the time a standards track document reached the "Proposed Standard" state of maturity. Now within IETF there is no fixed time period, however a standard may be held up where a deferral of the standard will help obtain the assurance of licensing. ANSI also suggests periodic notices to committee members and encouragement of any party (not just the IPR holder) to identify IPR relevant to a standard. One detail in the ANSI Guidelines not found in corresponding ISO/IEC/ITU/IETF procedures is a requirement in certain instances for a general disclaimer from an interested party or patent holder "... to the effect that such party does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed standard." Some industry segments believe that the clause "... and does not anticipate holding any invention..." is overly constraining and could lead down the trail toward the abandoned ETSI approach.

A final common thread among the procedures is the need for cautionary statements about IPR to be included in the introductory material for standards where IPR is a consideration. One of the objectives of such statements is to remove the standards developing organization from appearing to give a position on the validity or scope of any particular IPR. ANSI's wording here is representative, '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.' Yet another objective is to remove the standards organization from any liability at all with regard to identifying applicable patent rights. So even in the case where there is no patent right alleged, the ISO/IEC policy requires the publication to contain the cautionary wording, 'Attention is drawn to the possibility that some of the elements of this International Standard may be the subject of patent rights." ISO [and/or IEC] shall not be held responsible for identifying any or all such patent rights. If an IPR is required and that fact is known, the statements generally refer the user to a data base on relevant IPR and its availability for licensing or to the standards developer for further information on the commitment that an IPR holder has made about nondiscriminatory licensing on fair and reasonable terms. In RFC 2026, the IETF published a clarifying statement about the potential of patent infringement,  "Accordingly, our view is that the proposed protocol can be implemented without necessarily infringing the XXX Patent. Parties considering adopting this protocol must be aware that some specific implementations, or features added to otherwise non- infringing implementations, may raise an issue of infringement with respect to this patent or to some other patent. This statement is for the IETF's assistance in its standard-setting procedure, and should not be relied upon by any party as an opinion or guarantee that any implementation it might make or use would not be covered by the XXX Patent and any other patents."   There exists another precedent  for cautionary wording  added to a standard in the case where an organization proceeds to publish a standard even when there is an IPR claim, but no related commitment from the IPR claimant to license. The Telecommunications Industry Association (TIA) adds such a statement  to "Interim" standards in such situations. In these instances   Telecommunications Industry Association (TIA) Interim standards contain the warning, "Users of this standard are cautioned that one or more patents (if issued) which are not presently available for licensing under terms which are reasonable and demonstrably free from unfair discrimination may be essential to the implementation of this standard."

Companies must include IPR in their strategies for participation in standards activities. Companies that own IPR must determine how they would meet the expectations of FTC with respect to disclosure of IPR during the standards process and the general obligation of most standards developing organizations to agree to license that IPR if it becomes an essential part of a standard. Companies in the position of needing IPR to meet or adopt a standard depend on such statements to license the applicable technology.

About the Author: George T. Willingmyre, P.E. is President of GTW Associates, a consulting firm specializing in international trade, standards policy and conformity assessment matters. Previously, Mr. Willingmyre was Vice President of Washington Operations for the American National Standards Institute. GTW Associates clients include Microsoft Corporation; American Dental Association; Singapore Productivity Standards Board; Asian Productivity Organization; and the American Hotel & Motel Association. An expanded version with text or links to the applicable IPR polices of the organizations mentioned in this article may be found at http://www.gtwassociates.com/.

ANNEX 1 ANSI Patent Policy (This document is available at http://web.ansi.org/public/library/std_proc/anspro/due_proc1.html#patent.

ANSI Procedures, Sections 1.2.11 - 1.2.11.4

ANSI's Patent Policy

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 Sections 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 anticipate holding 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.

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

When the Institute receives from a patent holder the assurance set forth in 1.2.11.1 (1) or (2), 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(s).

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.

ANNEX 2 ISO Patent Policy

From ISO Directives Part 2 Methodology for the development of International Standards as revised 1995-01-29

5.7 Reference to patent rights

If, in exceptional situations, technical reasons justify such a step, there is no objection in principle to preparing an International Standard in terms which include the use of items covered by patent rights - defined as patents, utility models and other statutory rights based on inventions, including any published applications for any of the foregoing - even if the terms of the standard are such that there are no alternative means of compliance. The rules given in annex A shall be applied.

Annex A

(normative)

Reference to patent rights

A.1 A published International Standard for which no patent rights are identified during the preparation thereof, shall contain the following notice:

" Attention is drawn to the possibility that some of the elements of this International Standard may be the subject of patent rights. ISO [and/or IEC] shall not be held responsible for identifying any or all such patent rights."

A.2 If technical reasons justify the preparation of an International Standard in terms, which include the use of items covered by patent rights, the following procedures shall be complied with.

a) The originator of a proposal for an International Standard shall draw the attention of the technical committee or sub-committee to any patent rights of which the originator is aware and considers to cover any item of the proposal. Any party involved in the preparation of a standard shall draw the attention of the technical committee or subcommittee to any patent rights of which it becomes aware during any stage in the development of the standard.

b) If the proposal is accepted on technical grounds, the originator shall ask any holder of such identified patent rights for a statement that the holder would be willing to negotiate worldwide licenses under his rights with applicants throughout the world on reasonable and non-discriminatory terms and conditions. Such negotiations are left to the parties concerned and are performed outside the ISO/IEC. A record of the right holder's statement shall be placed in the registry of the ISO Central Secretariat or IEC Central Office as appropriate, and shall be referred to in the introduction to the relevant International Standard (see item e below). If the right holder does not provide such a statement, the technical committee or sub-committee concerned shall not proceed with inclusion of an item covered by a patent right in the International Standard without authorization from ISO Council or IEC Council as appropriate.

c) All drafts submitted for comment shall include on the cover page the following text:

" Recipients of this document are invited to submit, with their comments, notification of any relevant patent rights of which they are aware and to provide supporting documentation."

d) An International Standard shall not be published until the statements of the holders of all identified patent rights have been received, unless the Council concerned gives authorization.

e) A published International Standard for which patent rights have been identified during the preparation thereof, shall include the following notice in the introduction:

" The International Organization for Standardization (ISO) [and/or] International Electrotechnical Commission (IEC) draws attention to the fact that it is claimed that compliance with this International Standard may involve the use of a patent concerning (..subject matter..) given in (..subclause..).

The ISO [and/or] IEC take[s] no position concerning the evidence, validity and scope of this patent right.

The holder of this patent right has assured the ISO [and/or] IEC that he is willing to negotiate licenses under reasonable and non-discriminatory terms and conditions with applicants throughout the world. In this respect, the statement of the holder of this patent right is registered with the ISO [and/or IEC. Information may be obtained from:

[...name of holder of patent right...]

[...address...]

Attention is drawn to the possibility that some of the elements of this International Standard may be the subject of patent rights other than those identified above. ISO [and/or] IEC shall not be held responsible for identifying any or all such patent rights."

A.3 Should it be revealed after publication of an International Standard that licenses under patent rights, which appear to cover items included in the standard cannot be obtained under reasonable and non-discriminatory terms and conditions, the International Standard shall be referred back to the relevant technical committee or sub-committee for further consideration

ANNEX 3 PATENT POLICY STATEMENT OF Telecommunications Standards Bureau of ITU This document may be found at http://www.itu.int/ITU-Databases/TSBPatent/index-fr.html.

Over the years, the TSB has developed a "code of practice" regarding intellectual property rights (patents) covering, in varying degrees, the subject matters of ITU-T Recommendations. The rules of the "code of practice" are simple and straightforward. Recommendations are drawn up by telecommunications and not patent experts; thus, they may not necessarily be very familiar with the complex international legal situation of intellectual property rights such as patents, etc.

ITU-T Recommendations are non-binding international standards. Their objective is to ensure compatibility of international telecommunications on a world-wide basis. To meet this objective, which is in the common interests of all those participating in international telecommunications (network and service providers, suppliers, users) it must be ensured that Recommendations, their applications, use, etc. are accessible to everybody. It follows, therefore, that a commercial (monopolistic) abuse by a holder of a patent embodied fully or partly in a Recommendation must be excluded. To meet this requirement in general is the sole objective of the TSB code of practice. The detailed arrangements arising from patents (licensing, royalties, etc.,) are being left to the parties concerned, as these arrangements might differ from case to case.

This code of practice may be summarized as follows (it should be noted that ISO operates in a very similar way):

1. The TSB is not in a position to give authoritative or comprehensive information about evidence, validity or scope of patents or similar rights, but it is desirable that the fullest available information should be disclosed. Therefore, any ITU-T member organization putting forward a standardization proposal should, from the outset, draw the TSB attention to any known patent or to any known pending patent application, either their own or of other organizations, although the TSB is unable to verify the validity of any such information.

2. If an ITU-T Recommendation is developed and such information as referred to in paragraph 1 has been disclosed, three different situations may arise:

2.1 The patent holder waives his rights; hence, the Recommendation is freely accessible to everybody, subject to no particular conditions, no royalties are due, etc.

2.2 The patent holder is not prepared to waive his rights but would be willing to negotiate licenses with other parties on a non-discriminatory basis on reasonable terms and conditions. Such negotiations are left to the parties concerned and are performed outside the ITU-T.

2.3 The patent holder is not willing to comply with the provisions of either paragraph 2.1 or paragraph 2.2; in such case, no Recommendation can be established.

3. Whatever case applies (2.1, 2.2 or 2.3), the patent holder has to provide a written statement to be filed at the TSB. This statement must not include additional provisions, conditions, or any other exclusion clauses in excess of what is provided for each case in paragraphs 2.1, 2.2 and 2.3.

Annex 4 Patent Policy of IETF contained in RFC 2026 Available at ftp://ds.internic.net/rfc/rfc2026.txt.

10. INTELLECTUAL PROPERTY RIGHTS

10.1. General Policy

In all matters of intellectual property rights and procedures, the intention is to benefit the Internet community and the public at large, while respecting the legitimate rights of others.

10.2 Confidentiality Obligations

No contribution that is subject to any requirement of confidentiality or any restriction on its dissemination may be considered in any part of the Internet Standards Process, and there must be no assumption of any confidentiality obligation with respect to any such contribution.

10.3. Rights and Permissions

In the course of standards work, the IETF receives contributions in various forms and from many persons. To best facilitate the dissemination of these contributions, it is necessary to understand any intellectual property rights (IPR) relating to the contributions.

10.3.1. All Contributions

By submission of a contribution, each person actually submitting the contribution is deemed to agree to the following terms and conditions on his own behalf, on behalf of the organization (if any) he represents and on behalf of the owners of any propriety rights in the contribution.. Where a submission identifies contributors in addition to the contributor(s) who provide the actual submission, the actual submitter(s) represent that each other named contributor was made aware of and agreed to accept the same terms and conditions on his own behalf, on behalf of any organization he may represent and any known owner of any proprietary rights in the contribution.

l. Some works (e.g. works of the U.S. Government) are not subject to copyright. However, to the extent that the submission is or may be subject to copyright, the contributor, the organization he represents (if any) and the owners of any proprietary rights in the contribution, grant an unlimited perpetual, non-exclusive, royalty-free, world-wide right and license to the ISOC and the IETF under any copyrights in the contribution. This license includes the right to copy, publish and distribute the contribution in any way, and to prepare derivative works that are based on or incorporate all or part of the contribution, the license to such derivative works to be of the same scope as the license of the original contribution.

2. The contributor acknowledges that the ISOC and IETF have no duty to publish or otherwise use or disseminate any contribution.

3. The contributor grants permission to reference the name(s) and address(es) of the contributor(s) and of the organization(s) he represents (if any).

4. The contributor represents that contribution properly acknowledge major contributors.

5. The contribuitor, the organization (if any) he represents and the owners of any proprietary rights in the contribution, agree that no information in the contribution is confidential and that the ISOC and its affiliated organizations may freely disclose any information in the contribution.

6. The contributor represents that he has disclosed the existence of any proprietary or intellectual property rights in the contribution that are reasonably and personally known to the contributor. The contributor does not represent that he personally knows of all potentially pertinent proprietary and intellectual property rights owned or claimed by the organization he represents (if any) or third parties.

7. The contributor represents that there are no limits to the contributor's ability to make the grants acknowledgments and agreements above that are reasonably and personally known to the contributor.

By ratifying this description of the IETF process the Internet Society warrants that it will not inhibit the traditional open and free access to IETF documents for which license and right have been assigned according to the procedures set forth in this section, including Internet-Drafts and RFCs. This warrant is perpetual and will not be revoked by the Internet Society or its successors or assigns.

10.3.2. Standards Track Documents

(A) Where any patents, patent applications, or other proprietary rights are known, or claimed, with respect to any specification on the standards track, and brought to the attention of the IESG, the IESG shall not advance the specification without including in the document a note indicating the existence of such rights, or claimed rights. Where implementations are required before advancement of a specification, only implementations that have, by statement of the implementors, taken adequate steps to comply with any such rights, or claimed rights, shall be considered for the purpose of showing the adequacy of the specification.

(B) The IESG disclaims any responsibility for identifying the existence of or for evaluating the applicability of any claimed copyrights, patents, patent applications, or other rights in the fulfilling of the its obligations under (A), and will take no position on the validity or scope of any such rights.

(C) Where the IESG knows of rights, or claimed rights under (A), the IETF Executive Director shall attempt to obtain from the claimant of such rights, a written assurance that upon approval by the IESG of the relevant Internet standards track specification(s), any party will be able to obtain the right to implement, use and distribute the technology or works when implementing, using or distributing technology based upon the specific specification(s) under openly specified, reasonable, non-discriminatory terms. The Working Group proposing the use of the technology with respect to which the proprietary rights are claimed may assist the IETF Executive Director in this effort. The results of this procedure shall not affect advancement of a specification along the standards track, except that the IESG may defer approval where a delay may facilitate the obtaining of such assurances. The results will, however, be recorded by the IETF Executive Director, and made available. The IESG may also direct that a summary of the results be included in any RFC published containing the specification.

10.3.3 Determination of Reasonable and Non-discriminatory Terms

The IESG will not make any explicit determination that the assurance of reasonable and non-discriminatory terms for the use of a technology has been fulfilled in practice. It will instead use the normal requirements for the advancement of Internet Standards to verify that the terms for use are reasonable. If the two unrelated implementations of the specification that are required to advance from Proposed Standard to Draft Standard have been produced by different organizations or individuals or if the "significant implementation and successful operational experience" required to advance from Draft Standard to Standard has been achieved the assumption is that the terms must be reasonable and to some degree, non-discriminatory. This assumption may be challenged during the Last-Call period.

10.4. Notices

(A) Standards track documents shall include the following notice:

"The IETF takes no position regarding the validity or scope of any intellectual property or other rights that might be claimed to pertain to the implementation or use of the technology described in this document or the extent to which any license under such rights might or might not be available; neither does it represent that it has made any effort to identify any such rights. Information on the IETF's procedures with respect to rights in standards-track and standards-related documentation can be found in BCP-11. Copies of claims of rights made available for publication and any assurances of licenses to be made available, or the result of an attempt made to obtain a general license or permission for the use of such proprietary rights by implementors or users of this specification can be obtained from the IETF Secretariat."

(B) The IETF encourages all interested parties to bring to its attention, at the earliest possible time, the existence of any intellectual property rights pertaining to Internet Standards. For this purpose, each standards document shall include the following invitation:

"The IETF invites any interested party to bring to its attention any copyrights, patents or patent applications, or other proprietary rights which may cover technology that may be required to practice this standard. Please address the information to the IETF Executive Director."

(C) The following copyright notice and disclaimer shall be included in all ISOC standards-related documentation:

"Copyright (C) The Internet Society (date). All Rights Reserved.

This document and translations of it may be copied and furnished to others, and derivative works that comment on or otherwise explain it or assist in its implmentation may be prepared, copied, published and distributed, in whole or in part, without restriction of any kind, provided that the above copyright notice and this paragraph are included on all such copies and derivative works. However, this document itself may not be modified in any way, such as by removing the copyright notice or references to the Internet Society or other Internet organizations, except as needed for the purpose of developing Internet standards in which case the procedures for copyrights defined in the Internet Standards process must be followed, or as required to translate it into languages other than English.

The limited permissions granted above are perpetual and will not be revoked by the Internet Society or its successors or assigns.

This document and the information contained herein is provided on an "AS IS" basis and THE INTERNET SOCIETY AND THE INTERNET ENGINEERING TASK FORCE DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY WARRANTY THAT THE USE OF THE INFORMATION HEREIN WILL NOT INFRINGE ANY RIGHTS OR ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE."

(D) Where the IESG is aware at the time of publication of proprietary rights claimed with respect to a standards track document, or the technology described or referenced therein, such document shall contain the following notice:

"The IETF has been notified of intellectual property rights claimed in regard to some or all of the specification contained in this document. For more information consult the online list of claimed rights."

ANNEX 5 TSB PATENT STATEMENTS DATABASE This document may be found at http://www.itu.int/ITU-Databases/TSBPatent/index-fr.html.

In order to facilitate both the standards making process and the application of ITU-T Recommendations, the Telecommunication Standardization Bureau (TSB) is making available its Patent Statements database composed of information that was communicated to the TSB (formerly the CCITT) by administrations, private enterprises, etc. that participate in the standards making activities of the ITU-T Study Groups. The patents mentionned in the Statements are embodied fully or partially in an ITU-T Recommendation. The Statements may contain information on specific patents or may contain no such information, but rather give a general statement about an organization's compliance with the TSB's statement on patent policy, for a particular Recommendation. (This patent policy statement can be found under ßIII. below.)

This database does not purport to be either accurate or complete, but only reflects the information that has been communicated to the Telecommunication Standardization Bureau. As such, the database may be viewed as simply raising a flag to alert users that they need to contact the organizations who have communicated Patent Statements to the the TSB in order to determine if patent licenses must be obtained for application of a particular Recommendation.

I Composition of the database

In each record of the database there are 9 categories:

1. Recommendation Number:---The number of the Recommendation to which the Patent Statement refers, ex: G.707

2. Id. Number.:---The identification number assigned to the Patent Statement communicated to the TSB. If there were, for example, 68 Patent Statements communicated to the TSB referring to Recommendation H.262, then there would be identification numbers ranging from H262-01 to H262-68.

3. Organization:---The organization that holds the patent which could include administrations, universities, etc., and its contact address.

4. Tel. No.:---The contact telephone number of the organization.

5. Fax. No.:---The contact fax number of the organization.

6. Patent Policy and Remarks:---The declared patent policy of the organization in its communication to the TSB. Most often the patent policy in the database is given as "Pat. pol. 2.2", which means that the organization subscribes to subclause 2.2 of the Statement on TSB Patent Policy. (See ßIII below.) Often the patent policy is given as "Pat. pol. 2.2 (under condition of reciprocity)", which means that the patent holder organization subscribes to subclause 2.2 but only under the condition that other companies holding patents also subscribe to subclause 2.2 in their relations to the patent holder organization. However, TSB disclaims any definitive interpretation of the organization's statement. This must be determined by direct negotiations with the organization.

7. Patent Title:---The title of a patent, if given, in an organization's communication to the TSB.

8. Patent Number:---The number of the patent cited in the communication to the TSB. If the patent has not yet been granted but has been applied for, the number given will be followed by "(appl. no.)" to indicate it is an application number.

9. Patent Country:---The country in which the patent has been obtained. If the patent is held in several countries, only the major country (if that can be determined) is given and in the "Patent Policy and Remarks" category, the countries are given where there are foreign counterparts mentionned in the Patent Statement.

10. Date Patent Statement Received:---The date when the Patent Statement was received at the Telecommunication Standardization Bureau. If that date cannot be determined (which is the case for some old Statements), then the date printed on the Statement itself, or the CCITT document in which it is cited, is used.

II Correcting the database

If any organization finds that the information concerning their Patent Statement in this database is in error or not up-to-date, they should communicate their updating information to:

Fax: +41 22 730 5853

Annex 6 December 30, 1997 IETF Page of Intellectual Property Rights Notices (current version available at available at http://www.ietf.org/ipr.html.

This page contains information pertaining to Internet Standards for which intellectual Property Rights have been asserted or conveyed in some manner.

The IESG/IETF take no position regarding the validity or scope of any intellectual property right or other rights that might be claimed to pertain to the implementation or use of the technology, or the extent to which any license under such rights might or might not be available.

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The PPP Compression Control Protocol (CCP)

The PPP Encryption Control Protocol (ECP)

IP Mobility Support

PPP EAP RSA Public Key Authentication Protocol

Grant of rights for Search address technology

IGRP

Clarification from Cisco Systems on Tag Switching Patent

Statement to OSPF WG meeting in Memphis

Adobe license to use TIFF in IETF standards

Intent to provide change control of PGP Key and messages to IETF

RealNetworks IPR Rights to implementors of Real Time Streaming Protocol (RTSP)

BT Notification of QOS Patent Application

ANNEX 7 Guidelines for Implementation of the ANSI Patent Policy

This document is available at http://web.ansi.org/public/library/guides/ppguide.html.

I Purpose

These Guidelines are intended to assist voluntary standards developers, and those that participate in the standards development process, in understanding and implementing the ANSI Patent Policy (the "Patent Policy", see Exhibit A). Drafted by a task force formed by ANSI for the purpose of studying the Patent Policy, the Guidelines seek to encourage the early disclosure and identification of patents that may relate to standards under development, so as to thereby promote greater efficiency in standards development practices.

By definition, guidelines are suggestions -- adherence is not essential for standards developers to be found in compliance with ANSI's Patent Policy. Rather, this is an effort to identify possible procedures that a standards developer may wish to adopt, either in whole or in part, for purposes of effectively implementing the Patent Policy. Additional or different steps may also be selected for such purposes.

II An Overview of the ANSI Patent Policy

The Patent Policy is set forth in Sections 1.2.11 - 1.2.11.4 of ANSI's "Procedures for the Development and Coordination of American National Standards" as approved by the ANSI Board of Directors (the "ANSI Procedures"). Compliance (or non-compliance) with the Patent Policy is one of the criteria to be considered by ANSI's Board of Standards Review ("BSR") in determining whether to approve (or withdraw approval of) an American National Standards. See ANSI Procedures Sections 1.3.1.1, 1.3.2.5.

As set forth in the ANSI Procedures:

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. ANSI Procedures, Section 1.2.11.

However, where a candidate standard may require the use of a patented invention, the procedures detailed in Sections 1.2.11.1 - 1.2.11.4 must be followed.

In particular, the identified party or patent holder must supply ANSI with either:

a general disclaimer to the effect that such party does not hold and does not anticipate holding any invention the use of which would be required for compliance with the proposed standard

or

a written assurance that either:

(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.

ANSI Procedures, Section 1.2.11.1.

The Patent Holder's statement of intent to comply shall be retained in the files of the Institute. ANSI Procedures, Section 1.2.11.2.

While ANSI's counsel will verify that the information required from the patent holder has been supplied, counsel will not undertake to evaluate whether the terms and conditions satisfy the substantive test set forth in Section 1.2.11.1 (i.e. whether the terms and conditions are "reasonable" and/or "free of any unfair discrimination"). Such a decision is the exclusive province of the Board of Standards Review (or, on appeal, the ANSI Appeals Board) if the issue is raised during the approval process or in a petition for withdrawal of approval. In making its decision, the BSR shall consider all information of record it finds relevant.

Neither the standards developer submitting a standard for approval 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 any patents brought to their attention. (ANSI Procedures, Section 1.2.11.4.)

A standards developer seeking approval of a proposed American National Standard should take steps that it reasonably concludes are sufficient to permit a representation to ANSI that the Patent Policy has been met. In turn, ANSI, through its BSR, will take those steps that it reasonably concludes are sufficient to determine that the Patent Policy has been met based on the record before the BSR. Upon publication, the standard shall bear a notice in form specified in Section 1.2.11.3.

III Possible Procedures for Implementing the Policy

A Early Disclosure of Patent Rights

Experience has indicated that early disclosure of patents is likely to enhance the efficiency of the process used to finalize and approve standards. Early disclosure permits notice of the patent to the standards developer and ANSI in a timely manner, provides participants the greatest opportunity to evaluate the propriety of standardizing the patented technology, and allows patent holders and prospective licensees ample time to negotiate the terms and conditions of licenses outside the standards development process itself.

Accordingly, during the development period, standards developers may wish to adopt procedures whereby one or more requests are made to participants for the disclosure of patents that may be required for use of standards in process. Such a request could be made, for example, by including it on letter ballots used in connection with the development of a proposed standard. Alternatively, other means could be adopted so that requests are repeated throughout the course of the standards development process -- e.g., by a semi-annual notice mailed to each participant in the development process or appropriate working group(s).

This is not to suggest that a standards developer should require any participant in the development process to undertake a patent search of its own portfolio or of any other. The objective is to obtain early disclosure concerning the existence of patents, where known.

A standards developer may also consider taking steps to make it clear that any participant in the process -- not just patent holder -- is permitted to identify or disclose patents that may be required for implementation of the standard. Generally, it is desirable to encourage disclosure of as much information as possible concerning the patent, including the identity of the patent holder, the patent's number, and information regarding precisely how it may relate to the standard being developed. Further, to assist in international standardization, a standards developer may deem it appropriate to encourage the disclosure of relevant unexpired foreign patents.

Similarly, a standards developer may wish to encourage participants to disclose the existence of pending U.S. patent applications relating to a standard under development. Of course, in such a situation the extent of any disclosure may be more circumscribed due to the possible need for confidentiality and uncertainty as to whether an application will mature into a patent and what its claimed scope will ultimately be.

B Early Indication of a Willingness to License

The early identification of relevant patents should also increase the likelihood of an early indication from the patent holder that it is willing to license its invention, that it is prepared to do so on reasonable terms and conditions demonstrably free of unfair discrimination, or that the patent in question is not required for compliance with the proposed standard. A patent holder may have a strong incentive to provide an early assurance that the terms and conditions of the license will be reasonable and demonstrably free of unfair discrimination because of its inherent interest in avoiding any objection to the standardization of its proprietary technology. As a consequence, patent holders and prospective licensees would be provided greater opportunities to negotiate acceptable license terms.

It should be reiterated, however, that the determination of specific license terms and conditions, and the evaluation of whether such license terms and conditions are reasonable and demonstrably free of unfair discrimination, are not matters that are properly the subject of discussion or debate at a development meeting. Such matters should be determined only by the prospective parties to each license or, if necessary, by an appeal challenging whether compliance with the Patent Policy has been achieved.

It should also be emphasized that, notwithstanding the incentive for patent holders to indicate any early willingness to license, it may not be possible for potential patent holders to give such an assurance until the standards development process has reached a relatively mature stage. It might be that only at that time will the patent holder be aware that its patent may be required for use of the proposed standard. This should not, however, preclude a patent holder from giving an assurance that if its patent is required for use of the standard it will license on reasonable terms and conditions demonstrably free of unfair discrimination.

Thus, standards developers may wish to adopt procedures that would permit and encourage the early indication by patent holders of their willingness to comply with the Patent Policy by providing one of the assurances specified therein. Such encouragement might take the form of simply advising participants in the development effort that assurances may be made at an early stage, explaining the advantages of early negotiations, or through other means. While participants in the standards development effort might consider a refusal to provide assurances (or a refusal to commit to offer acceptable licensing terms and conditions) as a ground for favoring an alternative technology, the patent holder is only required to provide assurances called for by the Patent Policy prior to the final approval of the proposed standard as an American National Standard.

C Subsequently Discovered Patents

By its terms, the Patent Policy applies with equal force to situations involving (1) the discovery of patents that may be required for use of a standard subsequent to its adoption and (2) the initial issuance of a patent after adoption. Once disclosure is made, the holder is obligated to provide the same assurances to ANSI as are required in situations where patents exist or are known prior to approval of a proposed standard as an American National Standard.

Thus, if notice is given of a patent that may be required for use of an already approved American National Standard, a standard developer may wish to make it clear to its participants that the ANSI procedures require the patent holder to provide the assurances contained in the Patent Policy or suffer the withdrawal of ANSI's approval of the standard as an American National Standard.

IV Conclusion

Good standards development is often time consuming and demands considerable effort by those participating in the process. In fields that may involve the use of patented technology in a standard, therefore, it is particularly important that a patent holder's willingness and intention to comply with ANSI's Patent Policy be ascertained as soon as possible. Doing, so, however, does not require participants in standards development meetings to be come involved in negotiating the terms and conditions of a possible license with the patent holder. To the contrary, what is required is the use of effective procedures designed to assure an understanding of the Patent Policy and to foster prompt compliance with it.

Annex  8     Note this document is available at  ftp://ds.internic.net/rfc/rfc2002.txt

RFC 2002 IP Mobility Support October 1996

1. Patent Issues As of the time of publication, the IETF had been made aware of two patents that may be relevant to implementors of the protocol described in this technical specification.

A.1. IBM Patent #5,159,592 Charles Perkins, editor of this memo, is sole inventor of U.S. Patent No. 5,159,592, assigned to IBM. In a letter dated May 30, 1995, IBM brought this patent to the attention of the IETF, stating that this patent "relates to the Mobile IP." We understand that IBM did not intend to assert that any particular implementation of Mobile IP would or would not infringe the patent, but rather that IBM was meeting what it viewed as a duty to disclose information that could be relevant to the process of adopting a standard. Based on a review of the claims of the patent, IETF believes that a system of registering an address obtained from a foreign agent, as described in the document, would not necessarily infringe any of the claims of the patent; and that a system in which an address is obtained elsewhere and then registered can be implemented without necessarily infringing any claims of the patent. Accordingly, our view is that the proposed protocol can be implemented without necessarily infringing the Perkins Patent. Parties considering adopting this protocol must be aware that some specific implementations, or features added to otherwise non- infringing implementations, may raise an issue of infringement with respect to this patent or to some other patent. This statement is for the IETF's assistance in its standard-setting procedure, and should not be relied upon by any party as an opinion or guarantee that any implementation it might make or use would not be covered by the Perkins Patent and any other patents. In particular, IBM might disagree with the interpretation of this patent described herein.