RIGHTS AS A FACTOR IN THE DEVELOPMENT OF STANDARDS
George T. Willingmyre, P.E.
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
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
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
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
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 - 184.108.40.206
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 220.127.116.11 through
18.104.22.168 shall be followed.
22.214.171.124. 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;
(2) A license will be made available to applicants under reasonable terms and
conditions that are demonstrably free of any unfair discrimination.
126.96.36.199. Record of Statement
A record of the patent holder's statement shall be placed and retained in the files of
When the Institute receives from a patent holder the assurance set forth in 188.8.131.52
(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).
184.108.40.206. 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.
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
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
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
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...]
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
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
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
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
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
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
(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
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
(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
"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
(C) The following copyright notice and disclaimer shall be included in all ISOC
"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
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
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
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.
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
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
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.
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
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 - 220.127.116.11 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 18.104.22.168,
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 22.214.171.124 - 126.96.36.199 must be followed.
In particular, the identified party or patent holder must supply ANSI with
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
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,
(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 188.8.131.52.
The Patent Holder's statement of intent to comply shall be retained in the files of the
Institute. ANSI Procedures, Section 184.108.40.206.
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 220.127.116.11 (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 18.104.22.168.)
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 22.214.171.124.
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
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
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.
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
- 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
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.