February 17, 2011 

Ajit Jillavenkatesa 

National Institute of Standards and Technology 

100 Bureau Drive 

Stop 1060 

Gaithersburg, MD 20899-1060 

Re: Standardization Feedback for the National Science and Technology Council, 

Committee on Technology, Subcommittee on Standards Request for 

Information

Dear Mr. Jillavenkatesa: 

 The ABA Section of Science & Technology Law appreciates this opportunity 

to respond to the National Institute of Standards and Technology (“NIST”) Request 

for Information regarding the Effectiveness of Federal Agency Participation in 

Standardization in Select Technology Sectors dated December 8, 2010 (“RFI”). The 

views expressed herein are presented on behalf of the Section of Science & 

Technology Law (the “Section”) of the American Bar Association (“ABA”). These 

comments have not been approved by the House of Delegates or the Board of 

Governors of the ABA and, accordingly, should not be construed as representing the 

position of the ABA. The Section of Science & Technology Law was formed in 1974 

to provide a forum for addressing issues at the intersection of law, science, and 

technology. The Section’s Committee on Technical Standardization (the 

“Committee”) has long addressed the issue of standardization as essential to 

technological development and seeks to improve the development of solutions to 

policy issues having a mixture of legal and technical factors. Our Committee 

comprises legal experts in the law of technical standardization from industry, 

government, legal practice and academia. 

 In this response, we address two general areas in which the RFI seeks input: 

(1) perspectives on federal governmental roles in standards-setting activities, and (2) 

approaches relating to the handling of intellectual property rights (“IPR”), and 

particularly patents, in standards-setting activities. Specifically, we propose that 

NIST develop an informational resource and make it available from a publicly 

accessible source that catalogs the various government agencies involved in 

standards setting activities and their interests in such activities. We also suggest 

that a high-level checklist that would identify known Intellectual Property Rights (IPR) 

issues potentially blocking the implementation of specific standards of interest, could 

be useful to all stakeholders, including government stakeholders, to the extent that 

such a checklist would not negatively impact the benefits and diversity of the existing 

standards ecosystem. 
1. Government Role in Standards-Setting Activities

 The federal government has traditionally played an active role in formulating 

and adopting industry standards to protect public health and safety, national security, 

and the environment. Federal agencies such as the Food and Drug Administration 

(“FDA”), U.S. Department of Agriculture (“USDA”), Federal Communications 

Commission (“FCC”), Department of Homeland Security (“DHS”), Environmental 

Protection Agency (“EPA”), Nuclear Regulatory Commission (“NRC”) and the 

National Highway Transportation Safety Administration (“NHTSA”) routinely 

cooperate with industry in the promulgation of standards in the areas that they 

oversee. In addition, we understand that federal agencies have been active in 

setting standards that define and improve governmental processes such as voting, 

licensure, and immigration. 

 The federal government has traditionally played a less active role, however, 

in the development of standards relating more exclusively to the commercial sphere, 

such as standards enabling the interoperability of software, communications and 

electronic devices (the so-called information and communications technology, or 

“ICT”, sector). In this sphere, a complex ecosystem of voluntary standards-setting 

organizations (“SSOs”), some accredited by the American National Standards 

Institute (“ANSI”) (“ANSI Accredited SSOs”) and others not accredited 

(“Unaccredited SSOs”), has arisen to meet market needs and drive innovation and 

competition. To date, federal, state and local governmental agencies have 

participated in such voluntary groups primarily as participants or observers, and 

importantly, as individual agencies with their own unique objectives. The federal 

government abides by an explicit policy, embodied in the Office of Management and 

Budget (“OMB”) Circular A-119, of deferring to voluntary standards groups in these 

areas whenever possible, rather than developing government-specific standards. 

This deference to the voluntary standards ecosystem has both enabled rapid 

standards-development through nimble and commercially-incentivized participants, 

and has allowed optimal standards to be selected through the natural operation of 

competitive market forces. 

 The RFI identifies several areas, however, in which the sphere of activity 

traditionally dominated by private standards-setting groups has expanded or merged 

into areas subject to governmental oversight and involvement. These areas include 

the national smart grid for electrical power usage and distribution, information 

technology for healthcare applications, cyber security, and emergency 

communications interoperability. 

 We recognize the need for careful consideration of governmental involvement 

and interest in the establishment and coordination of standards in these areas, and 

commend the Subcommittee on Standards and NIST for seeking public input on this 

important issue. The Section urges the federal government to continue to abide by 

the principles set forth in OMB Circular A-119 and to continue seeking input from all 

relevant stakeholders representing industry, academia, civil society, and the public in 

formulating its approach to governmental involvement in standardization, reflecting 
this input in its decisions, and making all such decisions in a transparent and open 

manner. 

 To this end, we also suggest that the federal government facilitate the 

interaction of its agencies and the private standards-setting community, particularly 

in sectors that are unaccustomed to governmental involvement in standards setting. 

The number of potential agencies that may become involved in standardization in 

areas such as the smart grid, healthcare IT, and cyber security alone is daunting, 

and companies that provide products and services in these sectors may not be 

attuned to the activities and requirements of such agencies. A federal agency such 

as NIST would be ideally-situated to serve as an interface between federal agencies 

and the commercial sector, both by providing a centralized, uniform point for 

disseminating information about governmental requirements, inquiries, and activities 

in different sectors, and for collecting input and information from commercial, 

academic and public stakeholders for the benefit of federal agencies. For example, 

simply identifying all of the federal (and state and local) agencies involved in the 

smart grid activities at a single, online location would be of great service, and 

providing an online forum for such agencies to post their various initiatives, 

requirements, requests and inquiries would streamline the information gathering and 

dissemination processes, would better enable private enterprises to monitor 

governmental activities in areas of interest, and would facilitate public-private 

interaction in standardization activities. Such an informational clearinghouse, if it 

could be created and updated across all sectors that include ICT standards, would 

have the potential to facilitate governmental involvement in standards-setting 

activities and to make such involvement more transparent and meaningful to existing 

participants in standards setting. 

2. Approaches Relating to Patents in Standards-Setting Activities

 Standards-setting organizations (“SSOs”), whether or not ANSI-accredited, 

may compete and cooperate with one another. They not only compete based on the 

technologies that they standardize but also on their differing structures, processes, 

and policies. Some processes may be open and/or slow moving while others may be 

more limited and/or streamlined. SSOs, however, may also cooperate by 

referencing and building upon each others’ standards or by submitting their 

standards to “formal” SSOs1

, including international SSOs such as the International 

Organization for Standardization (“ISO”), the International Electrotechnical 

Commission (“IEC”), and the International Telecommunication Union (“ITU”), regional 

SSOs such as CEN/CENELEC and the European Telecommunications 

Standardization Institute (“ETSI”), and national organizations such as ANSI, for 

ratification. The ratification process often offers input and refinement from 

stakeholders that might not otherwise participate in the standards development 

process in the originating SSO. 

 

1 Standards developed by formal SSOs are sometimes recognized by governments and can 

be referenced in official documents including regulations. Accredited and Unaccredited 

SSOs may have their standards ratified by “formal” SSOs so that they can be more readily 

referenced in official government documents.  
 Almost all SSOs today have a written IPR policy that governs the treatment of 

patents and other IPR relating to standards developed within the SSO. These IPR 

policies often differ in significant regards and our experience is that there is no ideal 

or one-size-fits-all IPR policy.2

 Some SSO IPR policies are disclosure-based, in that 

participants are requested to disclose patents containing essential patent claims 

(those patent claims that would be infringed by implementing a standard). Once 

disclosed, patent holders are often required or requested to indicate whether the 

patent holder is (i) willing to license such essential patent claims to implementers of 

the standard on a reasonable and non-discriminatory basis, either with compensation 

(“RAND”) or without compensation (“RAND-RF” where RF refers to royalty-free), or 

(ii) not willing to license on these or other terms. Other SSO IPR policies are 

participation-based, in that participants may undertake a RAND or RAND-RF 

licensing commitment with regard to such participant’s essential patent claims by 

virtue of their participation in the SSO or working group developing the relevant 

standard. These participation-based SSOs may or may not have a formal patent 

disclosure obligation. They also may provide for limited exceptions to the licensing 

commitment obligation. Since RAND and RAND-RF licensing commitments are not 

actual licenses, individual implementers and patent holders may need to bilaterally 

negotiate a license outside the SSO tailored to their particular set of circumstances. 

 Stakeholders, including government stakeholders, have a legitimate interest 

in avoiding the unnecessary expenditure of resources to develop or adopt a standard 

that cannot be implemented because essential IPR is not available. As an initial 

approach, government agency stakeholders could work with industry to create a 

high-level check list that would identify issues potentially blocking the implementation 

 

2 The Section has itemized and annotated numerous IPR policy terms used by voluntary 

consensus-based SSOs in its publication Standards Development Patent Policy Manual

(ABA Publishing 2007). www.abanet.org/abastore/productpage/5450050

The FTC has recognized the wide ranging number and diversity of SSOs and that each has 

unique needs among its members, their business models, and the technology areas that they 

address. The FTC has advised several parties in its responses to comments in the N-Data

proceeding of its understanding that: 

“The Commission understands that standards-development organizations 

craft rules concerning intellectual property rights that recognize the dynamic 

character of the standards process, the necessary balancing of the interests 

of stakeholders in the process, and the varied business strategies of those 

involved. The content and intention of such rules will be one of several 

factors to be assessed in determining whether, under any given set of facts, 

challenged conduct by a holder of intellectual property rights may constitute a 

violation of the FTC Act. In addition, any such assessment would be likely to 

include (among other things) the timing and content of any assurances 

provided the holder of IP rights; the nature, timing and offered justification for 

any changes in those assurances; and the effects of the conduct on the 

standard-setting process and competition in relevant markets affected by the 

standards. As with many other competition-related enforcement matters, the 

question of liability under the FTC Act likely will turn on a careful assessment 

of the surrounding facts.” (FTC response letter to the American Bar 

Association) 
of the specific standard being considered. For example, such a checklist could 

include questions regarding whether the SSO has a published IPR policy, whether 

the SSO makes patent disclosures or licensing commitments public, whether any 

patent owners claiming to own essential patent claims have disclosed to the 

standards body in question that they are not willing to license such claims on RAND 

or RAND-RF terms, and whether there are any known IPR lawsuits, threats of 

litigation, or settlements involving the standardized technology. Such a checklist 

could serve two useful functions without impinging on the voluntary standards-setting 

system. First, it could assist SSOs that are being formed in considering which items 

they should address in their IPR policies during formation if they wish to ensure that 

the resulting standards will qualify as "voluntary, consensus standards" under the 

definition provided in OMB Circular A-119. Second, if the government allocates 

resources to help develop a standard, or chooses to adopt a standard, such a tool 

could facilitate and expedite the consideration and adoption process. 

 

 Actions taken by government agencies in response to the results of such a 

checklist could be of significant importance. We would be pleased to continue a 

dialog as to possible responses government agencies might consider taking based 

on such results. 

 We hope that this response is helpful to the Subcommittee and NIST, and we 

would be happy to discuss our comments in greater detail should you so desire. 

Sincerely, 

Stephen Wu

Chair, ABA Section of Science & Technology Law 

Jorge L. Contreras 

Co-Chair, ABA Section of Science & Technology Law Committee on Technical 

Standardization

Michele K. Herman 

Co-Chair, ABA Section of Science & Technology Law Committee on Technical 

Standardization