# Presentation: 047933

## NIST SeminarIPR and Standards

- March 10, 2008
- Dan Bart
- President and CEO
- Valley View Corporation
- Consultant

## Disclaimer

- Although I am on the ANSI Board and ANSI Executive Committee, and Chair the ANSI Intellectual Property Rights Policy Committee (ANSI IPRPC) and I am a past chair of the ANSI Patent Group and ANSI Copyright Group, this is _NOT_ a presentation on behalf of ANSI, but my _personal views and observations_.  Most ANSI material is from the ANSI Web site.
- Although I am an attorney, this presentation is for general education and _NOT_ presented as legal advice, there is currently no attorney/client relationship with NIST, you should always seek legal advice from NIST’s legal counsel.

## Standards and Intellectual Property Rights (IPR)

-  Standardization and IPR is a confusing area and a hot topic right now
- RAND vs FRAND
- Does the “F” word add anything?
*Ex Ante* and Ex-Uncle, do we care?
- Essential PATENT vs Essential Patent CLAIM?  Who cares?
- OPEN Standards?
- About “process,” “payments,” or “Open Source”?
- What is ANSI doing about this area?

## PRE-TEST

- For conformity assessment purposes, a pre-test of your current knowledge and understanding may be one way to measure what you may have learned today!
- Number a sheet of paper from 1-10

## Pre-Test

- True or False?
- 1.  ISO/IEC/ITU now have a Common IPR Policy.
- 2.  An attorney and Deputy Director General at ETSI once stated:  “IPR stands for ‘I Prefer Retirement!’ ”
- 3. According to data provided in NIST Special Publication 806, *Standards Activities of Organizations in the United States* (1996 Edition), there are more than 93,000 standards produced and nearly 700 organizations develop standards.

## Pre-Test

- True or False?
- 4. There is no objection in principle to drafting an American National Standard (ANS) in terms that include the use of an essential patent claim (one whose use would be required for compliance with that standard) if it is considered that technical reasons justify this approach.
- 5. If patented technology is embraced within an American National Standard (ANS), licenses to use that technology must be available to standards users on terms that are Reasonable and Non-Discriminatory (RAND) and compensation free.

## Pre-Test

- True or False?
- 6.  To ensure all patented technology embraced by an ANS is disclosed, ANSI requires ANSI-accredited SDOs to have participants perform patent searches.
- 7.  An FTC attorney once advised the ANSI Patent Group that there are no anti-trust concerns if an SDO excludes a particular company and its patented technology from technical consideration in standardization unless that company make its patented technology available royalty-free to standards users.
- 8. ANSI has at least three groups looking at IPR issues and standardization.

## Pre-Test

- True or False?
- 9.  Standards run the gamut from ‘performance standards’ to very specific ‘design standards’; the more design-specific the standard, the higher the likelihood that patents may get involved.
- 10. The U.S. Government never claims copyright in any of its publications.

## Pencils DOWN!

- We will now cover some structure and concepts, and issues, and then revisit your quizzes!

## ANSI Structure

- ANSI MEMBERS
- ANSI Board
- ANSI Executive Committee
- ANSI Board Committees
- ANSI Policy Committees
- ANSI Forums (CIF, GMF, OMF, CMF)
- ANSI Standards Panels
- Program Oversight and Institute Standing Committees

## Slide 11

## ANSI IPRPC

-        The **IPRPC** is responsible for broad-based policy and position decisions regarding national, regional and international intellectual property matters, including the global trade and public policy aspects of such matters.
-     The **IPRPC** is responsible for developing Institute positions on issues relating to the incorporation of essential patents or other proprietary intellectual property in national, regional or international standards and for developing Institute positions relating to exploitation rights to the copyright in standards and the recognition of copyright protection for standards by courts, legislation, regulatory bodies and the industry.
- The ANSI Intellectual Property Rights Policy Committee (IPRPC) is an Institute policy committee that reports to the _[Executive Committee](http://www.ansi.org/about_ansi/structure_management/policy_commit_councils/ec.aspx?menuid=1)__ of the ANSI Board of Directors._
- Reporting to the IPRPC are the following standing committees:
- _[Patent Group](http://www.ansi.org/about_ansi/structure_management/policy_commit_councils/pg.aspx?menuid=1)__ _
- _[Copyright Group ](http://www.ansi.org/about_ansi/structure_management/policy_commit_councils/ad_hoc.aspx?menuid=1)_
-      The **ANSI IPRPC** will closely coordinate with the **ANSI** **International Policy Committee** and the **ANSI National Policy Committee**.

## ANSI IPRPC Standing Committees- Patent Group

- Patent Group
- The **ANSI Patent Group** is responsible for developing Institute requirements and procedures in the areas of embedded intellectual property rights. It is also primarily responsible for drafting the revised “Patent Policy” for incorporation into the *ANSI Essential Requirements* and for formulating the *Guidelines* that help explain and illustrate the important and often complex policy considerations relating to these documents. The ISO and IEC Patent Policy and other patent policies will be reviewed as needed.
- The **Patent Group** will make policy recommendations to the **ANSI IPRPC**.

## ANSI IPRPC Standing Committees- Copyright Group

- Copyright Group
- The **ANSI Copyright Group** is an open forum for ANSI members to review issues relating to the exploitation rights to the copyright in standards and the recognition of copyright protection for standards by courts, legislation, regulatory bodies and the industry
- The **ANSI Copyright Group** identifies and reviews issues relating to the assertion of copyright in standards and in the development of relevant strategic recommendations.

## ANSI Patent Policy

**3.1       ANSI patent policy - Inclusion of Patents in American National Standards**
**            **There is no objection in principle to drafting an American National Standard (ANS) in terms that include the use of an essential patent claim (one whose use would be required for compliance with that standard) if it is considered that technical reasons justify this approach.
**             **If an ANSI-Accredited Standards Developer (ASD) receives a notice that a proposed ANS or an approved ANS may require the use of such a patent claim, the procedures in this clause shall be followed**.**
**3.1.1 Statement from patent holder**
- The ASD shall receive from the identified party or patent holder either:
- (a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or
- (b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of implementing the standard either:
- (i) under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or
- (ii) without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination.

## ANSI Patent Policy

**3.1.2  Record of statement**
**           **A record of the patent holder’s statement shall be retained in the files of both the ASD and ANSI.
**3.1.3  Notice**
**           **When the ASD receives from a patent holder the assurance set forth in 3.1.1 b above, the standard shall include a note substantially as follows:
-            NOTE – 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 any such claim(s) or of any patent rights in connection therewith. If a patent holder has filed a statement of willingness to grant a license under these rights on reasonable and nondiscriminatory terms and conditions to applicants desiring to obtain such a license, then details may be obtained from the standards developer**.**
**3.1.4   Responsibility for identifying patents**
**           **Neither the ASD nor ANSI is responsible for identifying patents for which a license may be required by an American National Standard or for conducting inquiries into the legal validity or scope of those patents that are brought to their attention.

## Types of Issues on Agenda of ANSI IPRPC

- Recap of the ANSI Copyright Group (CG) Activities
- CG Operating Procedures, Target Case, White Paper on Copyrightability
- Recap of the ANSI Patent Group (PG) Activities
- FTC N-DATA, Patent Group Balloting Process
- DIN Proposal on Patent Valuation
- IPRPC TF on China White Paper
- Report from IPRPC Amicus Focus Group
- Update on Actions Related to Internet Governance Forum and World Intellectual Property Organization (WIPO)
- Report on November 2007 International Telecommunication Union Telecommunication Standardization Sector (ITU-T) TSB Director’s IPR Ad Hoc Meeting
- ANSI IPRPC Decision-Making Process
- Directions to Standing Committees

## Types of Issues on Agenda of ANSI Patent Group

- On-line reference of past public statements or positions taken by ANSI re Patents and Standardization
- Proposed ANSI input to next Global Standards Collaboration (GSC) meeting
- Reports on ANSI PG Issues list
- Issue 3, lack of LoA
- Inclusion of “marks” and “software” in content of standards
- Updates to ANSI Guidelines Document related to Patent Policy
- DIN NWIP on ISO Standard for Patent valuation
- ETSI IPR WG issues
- Decision-making process used in ANSI PG
- FTC Proposed Consent Decree on N-DATA

## Types of Issues on Agenda of ANSI Copyright  Group

- ISO Assignment of Exploitation Rights and Patents Form
- Status of Proceedings Against “Target” in Brazil
- White Paper on Copyrightability of Standards
- Copyright FAQ Paper Including Information on National Adoptions as Derivative Works
- US Government Claim of Copyright and Participation in US Technical Advisory Groups
- SDO Liability and Copyright Implications with the use of Smart Standards

## Issues or Discussions in other Forums

- US participation in a study to be completed by the WIPO secretariat including the topic of the role of standards and patents.
- IPR-specific activities related to standards policy by the Internet Governance Forum (IGF) and WIPO Provisional Committee on Proposals for a Development Agenda (PCDA); ANSI participation in either the next IGF meeting or the IGF Dynamic Coalition on Open Standards (DCOS), a discussion group that will be addressing “most urgent problems related to open technology standards and application interoperability.”
- ETSI SOS Interop: Standards, Open Standards and Interoperability
- GSC-12 Resolutions on Open Standards, Intellectual Property Rights Policies, and Cooperation with Patent and Trademark Offices

## Issues or Discussions in other Forums

- IPO Patents and Standards: Managing Your IP in the Digital Age Conference, November 5, 2007
- STANDARDS DEVELOPMENT ORGANIZATIONS AND IPR POLICIES
- INDUSTRY STANDARDS AND IPR POLICIES IN CHINA
- LITIGATION STRATEGIES FOR STANDARDS
- KEY ISSUES FOR STANDARDS LICENSING
- OPEN SOURCE SOFTWARE AND OPEN STANDARDS
- IEC, ISO and ITU, the world’s leading developers of international standards agree on common patent policy
- Use of International Standards to disseminate innovation encouraged by new agreement, Issued simultaneously by ITU, ISO and IEC
- Geneva, 19 March 2007 — The world’s leading international standards organizations have adopted a harmonized approach to address the inclusion of patented technology in standards. IEC (International Electrotechnical Commission), ISO (International Organization for Standardization) and ITU, under the banner of the World Standards Cooperation (WSC), have aligned their policies which allow for commercial entities to contribute the fruits of their research and development (R&D) activity safe in the knowledge that their intellectual property rights are respected**.**

## Recent Hot Topics

*Ex Ante* debates
- Generally no problem with optional, voluntary, unilateral disclosure of licensing terms to other companies participating in standards development process.
- Many concerns about discussions of licensing terms or negotiations in the SDO’s Technical Committees
- Definition of what is an “OPEN STANDARD”
- Effect of a Letter of Assurance (LoA) given to an SDO, when underlying patent is transferred to another party.
- Issue in *Rembrandt *Case and *FTC vs N-DATA*

## Key Points to remember about ANSI Patent Policy

- Focused on essential patent CLAIMS vs PATENTS
- ANSI encourages early disclosure of patent claims, but stops short of mandating disclosure
- Re Patent Searches (ANSI Guidelines)
- “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.”

## Key Points to remember about ANSI Patent Policy

- Early Disclosure (ANSI Guidelines)
- “Early disclosure permits notice of such patent claims 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_.”
- Pending Published Patent Applications (ANSI Guidelines)
- “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. “

## Key Points to remember about ANSI Patent Policy

- Discussions of licensing terms in Technical Committees (ANSI Guidelines)
- “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.”

## Quiz Answers

- 1. TRUE, ISO/IEC/ITU adopted Common Policy
- 2. TRUE, Frede Ask, after Chairing GSC-4 IPRWG
- 3. TRUE, see ANSI Web page or read the NIST report
- 4. TRUE, see ANSI Essential Requirements
- 5. FALSE, ANSI allows compensation such as reasonable royalties
- 6. FALSE, see ANSI Guidelines, patent searches not required
- 7. FALSE, FTC attorney advised there are anti-trust concerns in the exclusion of particular companies or technologies in standards-setting activities, for this reason.
- 8. TRUE, ANSI IPRPC, CG, and PG, and various WGs
- 9. TRUE, the more design-centric, the more likely to include patented technology, especially in some sectors, like ICT.
- 10. FALSE, the Department of Commerce has advised ANSI it sometimes claims copyright under laws of other countries or under international treaties.
- HOW DID YOU DO?

## Applying what we learned to a ‘hypothetical’ problem

- Assume the following hypothetical:
- An SDO has spent several years developing a standard for communications protocols of large CAD/CAM systems to communicate with manufacturing equipment on the shop floor for more automated manufacturing processes.
- One academic participant in this process has invented a very unique and novel way to implement this new standard, and has received patents in Korea, the USA, and EU on his method.
- What are the issues raised in this hypothetical situation?

## Applying what we learned to a ‘hypothetical’ problem

- An engineer from Company A, wants to know if:
- These patent claims are ‘essential,’ for compliance to this standard?
- If essential, must licenses be offered on terms that are RAND?
- If the standard can be implemented another way, does that affect the claim of essentiality?
- Is there anything the SDO can do about this situation?

## Discussions and Questions to our Panel

- We will now have some time for discussions on this hypothetical and also for participants to pose questions to our panel.

## Thank You!

- Dan Bart
- ValleyViewCorp@aol.com

## Resources

- ANSI ER and Guidelines
- http://www.ansi.org/standards_activities/domestic_programs/overview.aspx?menuid=3
- ANSI Open Standards
- http://publicaa.ansi.org/sites/apdl/_layouts/1033/searchresults.aspx
- ITU-T Open Standards
- http://www.itu.int/ITU-T/othergroups/ipr-adhoc/openstandards.html
- Common Patent Policy of ITU/IEC/ISO
- http://www.itu.int/ITU-T/ipr/
- FTC N-DATA
- http://www.ftc.gov/opa/2008/01/ethernet.shtm
- IPO http://www.ipo.org/AM/Template.cfm?Section=Past_Meetings_and_Events&Template=/CM/HTMLDisplay.cfm&ContentID=16647
- ETSI SOS
- http://portal.etsi.org/docbox/workshop/2005/sos_interoperability/sos3/
- GSC Resolutions from GSC-12
- http://portal.etsi.org/docbox/Workshop/GSC12/GSC12_Final_Resolutions/