February 18, 2011 

(Via electronic mail to SOS_RFI@nist.gov) 

Dr. Patrick D. Gallagher, Director 

National Institute of Standards and Technology, and 

Co-Chair, National Science and Technology Council’s 

 Sub-Committee on Standards 

Re: Standardization Feedback for Sub-Committee on Standards 

 Comments of the American Intellectual Property Law Association (AIPLA) 

Dear Dr. Gallagher: 

The American Intellectual Property Law Association (“AIPLA”) submits these comments in 

response to the Request for Information (“RFI”) issued by the National Institute of Standards and 

Technology (“NIST”), (75 Federal Register 76397 (December 8, 2010)). The approximately 

16,000 members of AIPLA include corporate and outside counsel and those involved in 

government service. They work daily on issues involving patents, trademarks, copyrights, and 

trade secrets and understand the legal and business issues underlying the development, 

commercialization, exploitation, and licensing of intellectual property. 

Recognizing the growing importance of intellectual property rights (“IPR”) in the context of 

standards setting, AIPLA formed a committee to, among other things, monitor and address 

intellectual property issues that may arise in connection with the development and/or adoption of 

industry standards. Since that time, AIPLA has submitted comments in response to a number of 

IPR-related standards initiatives.1 These comments reflect AIPLA’s general views that: 

1) AIPLA favors standards-setting organizations (SSOs) having the flexibility to formulate their 

own policies and procedures; 2) AIPLA does not support legislative, regulatory, judicial, or 

administrative action that requires all SSOs to adopt a single prescribed IPR/licensing and 

disclosure policy; and 3) AIPLA favors the practice by SSOs of making clear and publicly 

available information relating to the SSOs’ standards development and their IPR / licensing and 

disclosure policies. 

 

1 E.g., Comments of the American Intellectual Property Law Association on National Standards Formulation and 

Revision Plan of Standardization Administration of China, the Disposal Rules for the Inclusion of Patents in 

National Standards, March 1, 2010; AIPLA Response to Draft Guidelines on the Applicability of Article 101 of the 

Treaty on the Functioning of the European Union to Horizontal Co-operation Agreements, SEC (2010) 528/2 

June 24, 2010; AIPLA Response to Request for Comments on Draft BSI PAS 98 Standards Consortia–Part I and 

Part II, July 20, 2010; Draft Provisional Rules Regarding Administration of the Establishment and Revision of 

National Standards that Involve Patents, November 30, 2009. 
AIPLA Comments to NIST on SOS RFI 

February 18, 2011 

2 

Regarding the RFI, AIPLA concurs that emerging technologies offer great potential for 

delivering new and improved products and services in the global economy and that standards can 

enable further innovation and enhance the value of these new technologies. Indeed, the current 

voluntary consensus-based system has been at the center of the innovative technologies seen in 

the market today. Further, for many types of standards, particularly in technology industries 

such as those enumerated in the RFI, implementation of a standard involves IPR (particularly 

patents) owned by participants in the relevant standards-development process. 

And, while the RFI appears to focus on Federal agency participation in the process of developing 

and implementing standards, AIPLA respectfully suggests that, in general, certain attributes of 

this process promote sound and effective standards whether or not a Federal agency is a 

participant. As discussed below, these attributes include open and transparent processes that 

permit all stakeholders to participate, clear and balanced rules and policies that are publicly 

available, and publication of patent information voluntarily submitted by patentees. 

Regarding transparency, AIPLA notes that globally accepted principles of standardization 

development emphasize that the standards-development process should be open and transparent. 

This proposition is clear in the work of such well-recognized standards bodies as the American 

National Standards Institute (ANSI), International Telecommunication Union (ITU), 

International Organization for Standardization (ISO), and the International Electrotechnical 

Commission (IEC). 

For example, to maintain ANSI accreditation, standards developers are required to consistently 

adhere to a set of requirements or procedures known as the “ANSI Essential Requirements,” 

which govern the consensus development process. Such due process includes ensuring that 

industry standards are developed in an environment that is equitable, publicly accessible, and 

responsive to the requirements of various stakeholders including promoters, contributors, and 

implementers of these standards. An open and fair standard-setting process ensures that all 

interested and affected parties have an opportunity to participate in a collaborative, balanced, and 

consensus-based process. 

One area that may not receive much attention involves SSOs’ governance documents. Many 

SSOs provide a basic level of transparency to such foundational documents as their articles of 

incorporation, bylaws, and antitrust and intellectual property rights policies. Yet others either do 

not make their governance documents available, or make them difficult to find. Further, some 

SSOs do not provide more complete access to additional documentation, such as patent selfdeclarations, which may identify patents with essential patent claims and/or may include patent 

licensing commitments. This information can be crucial for patentees who wish to participate in 

the standards-setting effort and for entities who desire to implement standards, especially since 

this information will differ from SSO to SSO. 

For patents on standards, it is important to recognize that stakeholders in standards development 

may view patents from many different perspectives, depending on a myriad of factors. For 

example, some firms invest in research and development and contribute patented technology into 

the standards-development process. These firms may choose to license their patents to 

implementers and users to generate revenue for further research and development. 
AIPLA Comments to NIST on SOS RFI 

February 18, 2011 

3 

Alternatively, firms may use their patent portfolios defensively, e.g., they may enter into crosslicenses to protect their products that incorporate standardized technology where the sale of such 

products creates revenue for further research and development. Other firms do not invest in 

research and development, but rather rely on products and services that use the standardized 

technology to support their particular business. Still other firms may support all of these 

business models, and, accordingly, the demarcation line among these various stakeholders may 

blur. 

In addition, depending on the standard being developed, the government may have a particular 

interest in a standard. Regardless of the various stakeholders involved, the current voluntary 

consensus-based standardization process is effective at balancing these various interests while 

promoting innovation for the benefit of all. 

To balance the various interests in IPR discussed above, most voluntary consensus-based SSOs 

craft an intellectual property policy and, in particular, a patent policy. These patent policies 

reflect the interests of the SSO’s membership and, therefore, may vary extensively from one SSO 

to another. Yet, to be successful, it is essential that they remain balanced and unbiased. For 

example, SSOs need to recognize that implementers investing in products that use the standard 

want to know that they can rely on licensing commitments, including those made by 

predecessors in interest. SSOs also want to be able to rely on commitments made by patent 

owners to preserve the integrity and reliability of their processes. 

At the same time, SSOs need to recognize the value of including patented technology in 

standards, while providing fair and reasonable incentives to patent holders to offer licensing 

commitments and to participate in standards development. Those incentives may include the 

ability to seek royalties, or they may include the ability to expand design freedom through 

reciprocal licensing requirements and defensive suspension provisions. Thus, a participant could 

agree to license patents essential to implement a standard in return for a reciprocal licensing 

commitment from the implementer of the standard. 

SSO diversity has created a dynamic and flexible standards ecosystem, able to respond to market 

needs as they change and, importantly, able to ensure that standards do not limit competition but 

instead promote competition and innovation. SSOs, however, generally share a common goal. 

They seek to avoid developing a standard that cannot be implemented because a participant in 

the standards-development process holds a blocking patent that it refuses to license or refuses to 

license on reasonable terms. To address this concern, most SSOs typically require participants in 

the standards-development process to follow rules concerning patent disclosure and/or patent 

licensing commitments. 

Patent disclosure rules specify when and how a patentee participating in the standardsdevelopment process should disclose its patents. Rules regarding patent licensing commitments 

typically refer to situations in which a patentee declares its willingness to offer a license or 

undertakes a commitment to license particular patent claims to implementers of the standard on 

certain terms and conditions, typically reasonable and non-discriminatory (RAND). AIPLA 

understands that under a typical IPR policy, either as a result of explicit language or by 

implication, the specific terms of a license remain to be agreed upon between the owner of the 

patent claim and the implementer of the standard. 
AIPLA Comments to NIST on SOS RFI 

February 18, 2011 

4 

Despite the increasing number of proposals regarding patent disclosure and licensing 

commitments in the context of standards setting generally, however, few, if any, have been made 

to ensure that SSOs’ patent policies and related information are clearly stated and made publicly 

available. While regulators, legislators, and policy makers worldwide are focusing on specific 

aspects of patent policies, they have failed to focus on fundamental improvements that could be 

made—namely the publication of clearly stated patent policies and publication of patent 

information voluntarily submitted by patentees. It is critical that the rules are unambiguous and 

clearly understood by all stakeholders. 

For example, implementers of standards may wish to avoid infringement by seeking appropriate 

licenses, but may not do so if they do not know or understand the relevant patent policy and/or 

the patent declarations made pursuant to the relevant patent policy. Similarly, participants in a 

standards-setting initiative who do not follow the relevant patent policy, either because they are 

unaware of it or do not understand its terms, could be said to have waived important patent 

rights, or may be accused of serious violations such as antitrust violations or fraud under 

applicable law. 

While certain principles such as open, transparent processes and clear and balanced policies are 

key attributes of sound and effective standards, AIPLA is not suggesting that SSOs should 

follow a single patent policy. To do so would constrain the flexibility that has benefited 

standards for decades. SSOs and their members are in the best position to review their patent 

policies and to determine what, if any, changes should be made. 

In this regard, AIPLA has expressed its concerns about recent proposals that could be interpreted 

to limit the diversity of patent policies adopted by some SSOs. See, for example, the Standards 

Administration of China and the China National Institute of Standards draft proposed rules 

concerning the patent policy for Chinese National Standards, and the British Standards 

Institution proposal concerning good practices for standards consortia. 

In summary, the current voluntary consensus-based system has continued to be successful due to 

its ability to adapt and respond to market needs. The government, along with other stakeholders, 

has a strong interest in promoting policies and processes that support this system, including open 

processes and balanced policies that permit all stakeholders to participate, clear rules and policies 

that are publicly available, and publication of patent information voluntarily submitted by 

patentees. 

AIPLA appreciates the opportunity to provide these comments and would be pleased to answer 

any questions these comments may raise. We thank you in advance for your consideration of 

these views. 

Sincerely 

Q. Todd Dickinson 

Executive Director