GTW ASSOCIATES 

GTW Associates 

1012 Parrs Ridge Drive 

Spencerville, MD 20868 

phone 301-421-4138 

facsimile 301-421-0977 

gtw@gtwassociates.com 

http://www.gtwassociates.com

Comments of GTW Associates on 

Effectiveness of Federal Agency Participation in Standardization in Select 

Technology 

Sectors for National Science and Technology Council Subcommittee on 

Standardization 

Docket No. 0909100442–0563–02 

Introduction

Role of government in standards related to Regulation & Procurement

Role of government in national standards policy and trade

Role of government as “convener” of stakeholders 

Consideration of Intellectual Property questions 

List of Recommendations

Appendices

Appendix One US-EU HIGH-LEVEL REGULATORY COOPERATION FORUM 

REPORT ON THE USE OF VOLUNTARY STANDARDS IN SUPPORT OF REGULATION IN 

THE UNITED STATES (October 2009) 

Appendix Two January 18, 2011 Executive Order 13563, Improving Regulation and 

Regulatory Review 

Appendix Three February 3, 2011 M-11-10 MEMORANDUM FOR THE HEADS OF 

EXECUTIVE DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT REGULATORY 

AGENCIES FROM: Cass R. Sunstein Administrator SUBJECT: Executive Order 13563, 

“Improving Regulation and Regulatory Review” 
Appendix Four Federal Register / Vol. 76, No. 42 / Thursday, March 3, 2011 / Proposed Rules 

Revisions to the Unregulated Contaminant Monitoring Regulation (UCMR 3) for Public Water 

Systems Document ID: EPA-HQ-OW-2009-0090-0001 

Appendix Five Revised Patent Procedures of the Federal Communications Commission 3 

F.C.C. 2d Excerpted from pages 26 and 27 and 28 

Appendix Six Mandatory Patent Licenses Under Section 308 of the Clean Air Act TITLE 40--

PROTECTION OF ENVIRONMENT CHAPTER I--ENVIRONMENTAL PROTECTION AGENCY 

) PART 95_MANDATORY PATENT LICENSES 

Appendix Seven NATO COMMITTEE FOR STANDARDISATION NATO INTELLECTUAL 

PROPERTY RIGHTS POLICY FOR NATO STANDARDS AND NATO DISPOSITIONS 

RELATED TO THE ISSUE OF COPYRIGHTS FOR NATO STANDARDS DOCUMENT CM(2008)0017 Silence Procedure ends: 28 Mar 2008 16:00 
Introduction 

Standards are ubiquitous and exist in every industrial products & services sector; 

Interoperability standards establish key interfaces between diverse industrial and product 

service sectors; Horizontal system standards applicable to management and environment and 

occupational safety & health and “social responsibility” can apply to any business, organization 

or agency. Standards can make or break global markets for the technologies of tomorrow. 

GTW Associates applauds the intention of the the National Institute of Standards and 

Technology, on behalf of the National Science and Technology Council’s Technology 

Committee Sub-Committee on Standards to as the Federal Register of December 8, 2010 

states: 

invites interested parties to provide their perspectives on the effectiveness of Federal 

agencies’ participation in the development and implementation of standards and 

conformity assessment activities and programs. This information will help the SubCommittee on Standards develop case studies that Federal agencies can consider in 

their future engagement in standards development and conformity assessment, 

particularly for multidisciplinary technologies, or for technologies involving engagement 

from multiple Federal agencies.

In the United States , most standards are developed within the voluntary, consensus based 

system. The U.S. standards system is primarily voluntary, private sector, and marketplace 

driven with multiple standards developers taking an active role. 

The U.S. Federal government participates as one of many stakeholders in the standards 

development process, not as the driver of the process. By comparison, governments in other 

nations play a more active role; and the process is more centralized. 

GTW Associates is an International Standards and trade policy consultancy. During the last five 

years GTW Associates has observed global phenomena of international trade policy; 

competition policy; and intellectual property rights policy combine with increasing impacts on 

the ability of United States business to compete effectively in the global marketplace. 

This combination of influences bears on technical standards setting with new and potentially 

profound negative impacts on those countries and businesses who fail to perceive and respond 

accordingly. 
INTERSECTION OF STANDARDS, PATENTS, COMPETITION, TRADE 

GTW Associates has organized its comments under the following headings and briefly 

summaries the main observations below: 

Introduction The implications of competition policy, international trade, and 

Intellectual property as a new paradigm and combination of factors impacting 

technical standards. 

Role of government in standards related to Regulation & 

Procurement The lessons, legislation and guidance applicable to 

government using standards to support regulation and procurement. The 

relevance of January 18, 2011 Executive Order 13563, Improving Regulation 

and Regulatory Review. 

Role of government in national standards policy and trade Key 

impacts on the competitiveness in the global marketplace 

Role of government as “convener” of stakeholders Importance of 

working closely with the private sector and to not unnecessarily expand 

and expend government resources when there are private sector 

alternative 

Consideration of Intellectual Property questions Response to 

questions and key impact of Intellectual property issues in standards 

setting in the global marketplace 

List of Recommendations Recitation of recommendations made in the 

main categories above 
Appendices Key references to support to the observations and 

recommendations 
Role of government in standards related to Regulation & Procurement 

US Government agencies use externally developed standards in a wide variety of ways. 

According to the US government page available at 

http://standards.gov/standards_gov/regulations.cfm#section-2 These include 

those identified in the table below: 

How are Voluntary Standards used in Regulations from 

http://standards.gov/standards_gov/regulations.cfm#section-2

Adoption: An agency may adopt a voluntary standard without change by incorporating the 

standard in an agency's regulation or by listing (or referencing) the standard by title. For 

example, the Occupational Safety and Health Administration (OSHA) adopted the National 

Electrical Code (NEC) by incorporating it into its regulations by reference. 

Strong Deference: An agency may grant strong deference to standards developed by a 

particular organization for a specific purpose. The agency will then use the standards in its 

regulatory program unless someone demonstrates to the agency why it should not. 

Basis for Rulemaking: This is the most common use of externally developed standards. The 

agency reviews a standard, makes appropriate changes, and then publishes the revision in 

the Federal Register as a proposed regulation. Comments received from the public during the 

rulemaking proceeding may result in changes to the proposed rule before it is instituted. 

Regulatory Guides: An agency may permit adherence to a specific standard I as an 

acceptable, though not compulsory, way of complying with a regulation. 

Guidelines: An agency may use standards as guidelines for complying with general 

requirements. The guidelines are advisory only: even if a firm complies with the applicable 

standards, the agency may conceivably still find that the general regulation has been violated. 

Deference in Lieu of Developing a Mandatory Standard: An agency may decide that it 

does not need to issue a mandatory regulation because voluntary compliance with either an 

existing standard or one developed for the purpose will suffice for meeting the needs of the 

agency. 

A document prepared in October 2009 by the United States government as a contribution to the 

US-EU HIGH-LEVEL REGULATORY COOPERATION FORUM contains an excellent overview 

of the role of voluntary standards in support of regulation. The US-EU HIGH-LEVEL 

REGULATORY COOPERATION FORUM REPORT ON THE USE OF VOLUNTARY 

STANDARDS IN SUPPORT OF REGULATION IN THE UNITED STATES (October 2009) 

and provided as APPENDIX ONE identifies the key US legislative underpinnings for both the 

regulatory and procurement use of standards in the United States: 

U.S. regulatory policies emphasize that regulations should be cost-effective, 

consistent, sensible, and understandable, and that the regulatory process should 
be open, transparent and fair to all interested parties. Consistent with this 

philosophy and to codify a long standing practice by Federal agencies, the U.S. 

Congress enacted Public Law 104-113, also known as the National Technology 

Transfer and Advancement Act (NTTAA), in March 1996.4 The NTTAA and the 

Trade Agreements Act of 1979, as amended (TAA) 5 are two key pieces of U.S. 

legislation affecting the regulatory and procurement use of standards. The 

NTTAA directs federal agencies to use, when practical and not otherwise 

prohibited by law, standards developed by voluntary consensus standards 

bodies to achieve public policy and procurement objectives, and the TAA 

prohibits federal agencies from engaging in any standards-related activity that 

creates unnecessary obstacles to trade and requires federal agencies to take 

into consideration international standards. 

... 

The TAA implements U.S. obligations under the TBT Agreement regarding the 

development, adoption, and application of technical regulations, standards, and 

conformity assessment procedures. Specifically, the TAA prohibits Federal 

agencies from engaging in any standards-related activity that creates 

unnecessary obstacles to trade. It further directs Federal agencies to ensure 

non-discriminatory treatment in applying standards–related activities to any 

imported product. The TAA directs each Federal agency to use performance 

based requirements, if appropriate; to take into consideration international 

standards; and, if appropriate, to base technical regulations on international 

standards. 

Recommendation One: Continue to base US federal government support of and participation in 

private sector standards activity consistent with the NTTAA and the Trade Agreements Act of 

1979 

The US-EU HIGH-LEVEL REGULATORY COOPERATION FORUM REPORT ON THE USE 

OF VOLUNTARY STANDARDS IN SUPPORT OF REGULATION IN THE UNITED STATES 

(October 2009) and provided as APPENDIX ONE continues to describe the administrative 

impact of a key Office of Management and Budget (OMB) OMB Circular A-119 Federal 

Participation in the Development and Use of Voluntary Consensus Standards and in Conformity 

Assessment Activities : 

Further guidance on implementing the NTTAA is contained in the Office of 

Management and Budget’s (OMB) Circular A-119, Federal Participation in the 

Development and Use of Voluntary Consensus Standards and in Conformity 

Assessment Activities. ... . It defines “voluntary consensus standards” as 

standards developed or adopted by a voluntary consensus body. It also defines a 

“voluntary consensus body” as an organization – whether domiciled in the United 

States or elsewhere – that has the following attributes: openness, balance of 

interests, due process, an appeals process, and consensus. The Circular also 

provides guidance for agencies participating in voluntary consensus standards 

bodies and describes procedures for satisfying the reporting requirements in the 

NTTAA. The aim of the Circular is minimize agency reliance on governmentunique standards. 

The OMB Circular A-119 Federal Participation in the Development and Use of Voluntary 

Consensus Standards and in Conformity Assessment Activities contains the key guidance: 
“Your agency must use voluntary consensus standards, both domestic and 

international, in its regulatory and procurement activities in lieu of governmentunique standards, unless use of such standards would be inconsistent with 

applicable law or otherwise impractical. 

Recommendation two : Continue to base US federal government support of and participation in 

private sector standards activity consistent with the (OMB) Circular A-119, Federal 

Participation in the Development and Use of Voluntary Consensus Standards and in Conformity 

Assessment Activities 

In the document Legislative and Regulatory Underpinnings of US Government use of Standards 

in Technical Regulations and Procurements and the development by Government of voluntary 

standards at http://www.gtwassociates.com/answers/Legislativeunderpinning.html GTW 

Associates also identifies the standards related text of Circular A-4 September 17, 2003 TO 

THE HEADS OF EXECUTIVE AGENCIES AND ESTABLISHMENTS Subject: Regulatory 

Analysis The Presumption Against Economic Regulation and Executive Order 12866, 

Regulatory Planning and Review 

Excerpts from Circular A-4 September 17, 2003 TO THE HEADS OF EXECUTIVE 

AGENCIES AND ESTABLISHMENTS Subject: Regulatory Analysis The Presumption Against 

Economic Regulation 

Government actions can be unintentionally harmful, and even useful regulations 

can impede market efficiency. For this reason, there is a presumption against 

certain types of regulatory action. In light of both economic theory and actual 

experience, a particularly demanding burden of proof is required to demonstrate 

the need for any of the following types of regulations: 

price controls in competitive markets;

production or sales quotas in competitive markets;

mandatory uniform quality standards for goods or services if the potential problem can 

be adequately dealt with through voluntary standards or by disclosing information of 

the hazard to buyers or users; or

controls on entry into employment or production, except (a) where indispensable to protect 

health and safety (e.g., FAA tests for commercial pilots) or (b) to manage the use of common 

property resources (e.g., fisheries, airwaves, Federal lands, and offshore areas). 

Performance Standards Rather than Design Standards Performance 

standards express requirements in terms of outcomes rather than specifying the 

means to those ends. They are generally superior to engineering or design 

standards because performance standards give the regulated parties the 

flexibility to achieve regulatory objectives in the most cost-effective way. In 

general, you should take into account both the cost savings to the regulated 

parties of the greater flexibility and the costs of assuring compliance through 

monitoring or some other means.

Informational Measures Rather than Regulation If intervention is contemplated to 

address a market failure that arises from inadequate or asymmetric information, 

informational remedies will often be preferred. Measures to improve the 

availability of information include government establishment of a standardized 

testing and rating system (the use of which could be mandatory or voluntary), 

mandatory disclosure requirements (e.g., by advertising, labeling, or enclosures), 

and government provision of information (e.g., by government publications, 

telephone hotlines, or public interest broadcast announcements). A regulatory 

measure to improve the availability of information, particularly about the 
concealed characteristics of products, provides consumers a greater choice than 

a mandatory product standard or ban.

Where information on the benefits and costs of alternative informational 

measures is insufficient to provide a clear choice between them, you should 

consider the least intrusive informational alternative sufficient to accomplish the 

regulatory objective. To correct an informational market failure it may be 

sufficient for government to establish a standardized testing and rating 

system without mandating its use, because competing firms that score well 

according to the system should thereby have an incentive to publicize the fact. 

 

Executive Order 12866 Regulatory Planning and Review October 1993 is a strategic 

statement of US Government policy . Federal agencies should promulgate only such 

regulations as are required by law, are necessary to interpret the law, or are made 

necessary by compelling public need, such as material failures of private markets to 

protect or improve the health and safety of the public, the environment, or the wellbeing of the American people. In deciding whether and how to regulate, agencies 

should assess all costs and benefits of available regulatory alternatives, including the 

alternative of not regulating. 

Excerpts 

(a) Agency Responsibilities. (1) Each agency shall (consistent with its own 

rules, regulations, or procedures) provide the public with meaningful 

participation in the regulatory process. In particular, before issuing a 

notice of proposed rulemaking, each agency should, where appropriate, 

seek the involvement of those who are intended to benefit from and 

those expected to be burdened by any regulation (including, specifically, 

State, local, and tribal officials). In addition, each agency should afford 

the public a meaningful opportunity to comment on any proposed 

regulation, which in most cases should include a comment period of not 

less than 60 days. Each agency also is directed to explore and, where 

appropriate, use consensual mechanisms for developing regulations, 

including negotiated rulemaking

A significant administrative action since the publication of the US-EU HIGH-LEVEL 

REGULATORY COOPERATION FORUM REPORT ON THE USE OF VOLUNTARY 

STANDARDS IN SUPPORT OF REGULATION IN THE UNITED STATES (October 2009) is 

the January 18, 2011 Executive Order 13563, Improving Regulation and Regulatory Review 

advising agencies to consider flexible approaches. It states: 

Sec. 4. Flexible Approaches. Where relevant, feasible, and consistent with 

regulatory objectives, and to the extent permitted by law, each agency shall 

identify and consider regulatory approaches that reduce burdens and maintain 

flexibility and freedom of choice for the public. These approaches include 

warnings, appropriate default rules, and disclosure requirements as well as 

provision of information to the public in a form that is clear and intelligible. 

Another significant administrative action is the February 1, 2011 MEMORANDUM FOR THE 

HEADS OF EXECUTIVE DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT 

REGULATORY AGENCIES M-11-10 MEMORANDUM FOR THE HEADS OF EXECUTIVE 
DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT REGULATORY AGENCIES 

FROM: Cass R. Sunstein Administrator SUBJECT: Executive Order 13563, “Improving 

Regulation and Regulatory Review” Appendix Three elaborating the use of less expensive 

and more effective approaches than mandates, prohibitions, and command-and-control 

regulation: 

Flexible Regulatory Tools 

Section 4 of Executive Order 13563 states that “. . . each agency shall identify 

and consider regulatory approaches that reduce burdens and maintain flexibility 

and freedom of choice for the public.” Such approaches include “warnings, 

appropriate default rules, and disclosure requirements, including provision of 

information to the public about risks in a form that is clear and intelligible.” This 

provision complements, and does not displace, related provisions in Executive 

Order 12866 (such as the provision in Section 1(b)(3), asking each agency to 

“identify and assess available alternatives to direct regulation, 

including...providing information upon which choices can be made by the 

public”). 

Section 4 acknowledges the importance of considering flexible approaches and 

alternatives to mandates, prohibitions, and command-and-control regulation. It 

emphasizes the potential value of approaches that maintain freedom of choice 

and improve the operation of free markets (for example, by promoting informed 

decisions). It directs agencies to consider the use of tools that can promote 

regulatory goals through actions that are often less expensive and more effective 

than mandates and outright prohibitions. When properly used, these tools may 

also encourage innovation and growth as well as competition among regulated 

entities. 

Recommendation Three: Increase attention and publication about the role of private sector 

standards activity to support Sec. 4. Flexible Approaches. of the January 18th 2011 

Executive Order 13563, Improving Regulation and Regulatory Review Appendix Two And the 

paragraph Flexible Regulatory Tools in the MEMORANDUM FOR THE HEADS OF 

EXECUTIVE DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT REGULATORY 

AGENCIES M-11-10 MEMORANDUM FOR THE HEADS OF EXECUTIVE DEPARTMENTS 

AND AGENCIES, AND OF INDEPENDENT REGULATORY AGENCIES FROM: Cass R. 

Sunstein Administrator SUBJECT: Executive Order 13563, “Improving Regulation and 

Regulatory Review” Appendix Three 

The Environmental Protection Agency includes text explaining its actions with respect to the 

NTTAA in its proposals for new regulations. See for example text from 

Federal Register / Vol. 76, No. 42 / Thursday, March 3, 2011 / Proposed Rules 

Revisions to the Unregulated Contaminant Monitoring Regulation (UCMR 3) for Public 

Water Systems Document ID: EPA-HQ-OW-2009-0090-0001 at Appendix Four 

Excerpt 

National Technology Transfer and Advancement Act Section 12(d) of the National 

Technology Transfer and Advancement Act of 1995 (‘‘NTTAA’’), Public Law 104–113 (15 

U.S.C. 272 note) directs EPA to use voluntary consensus standards in its regulatory 

activities unless to do so would be inconsistent with applicable law or otherwise 

impractical. 

Voluntary consensus standards are technical standards (e.g., materials specifications, 

test methods, sampling procedures, and business practices) that are developed or 

adopted by voluntary consensus standards bodies. NTTAA directs EPA to provide 
Congress, through OMB, explanations when the Agency decides not to use available and 

applicable voluntary consensus standards 

... 

EPA welcomes comments on this aspect of the proposed rulemaking and, specifically, 

invites the public to identify potentially-applicable voluntary consensus standards and to 

explain why such standards should be used in this regulation. 

Recommendation Four: Every regulatory agency should include a description of its activity 

related to the NTTAA in proposals for new regulations or in regulatory reviews . The activity 

should be described in Federal Register notices similar to manner in which the EPA describes 

its compliance with the NTTAA 

Recommendation Five: Every regulatory agency should include a description of its activity 

related to the OMB Circular A-119 and TAA in proposals for new regulations or in regulatory 

reviews . The activity should be described in Federal Register notices similar to manner in 

which the EPA describes its compliance with the NTTAA. 

Recommendation Six: The Office of Information and Regulatory Affairs at the Office of 

Management and Budget in its review of proposals from regulatory agencies should require 

information of the extent to which the proposing agency has included an investigation of the 

potential role of private sector standards activity in achieving the intended objectives. This 

and the review should include at a minimum the agency’s explanation of the reason voluntary 

standards activities were found not possible to use in light of the OMB Circular A-119 

instruction to: use voluntary consensus standards, both domestic and international, in its 

regulatory and procurement activities in lieu of government-unique standards unless use of 

such standards would be inconsistent with applicable law or otherwise impractical. Further the 

OMB should review the extent to which the proposed regulatory activity is consistent with the 

relevant standards text contained in Circular A-4 September 17, 2003 TO THE HEADS OF 

EXECUTIVE AGENCIES AND ESTABLISHMENTS Subject: Regulatory Analysis The 

Presumption Against Economic Regulation and the standards related legislative obligations of 

the NTTAA and the Trade Agreements Act of 1979.

The US-EU HIGH-LEVEL REGULATORY COOPERATION FORUM REPORT ON THE USE 

OF VOLUNTARY STANDARDS IN SUPPORT OF REGULATION IN THE UNITED STATES 

(October 2009) and provided as APPENDIX ONE also addresses the use of standards to 

support government procurement. 

 

How are standards use in Government Procurements? 

– Department of Defense for acquisition of $$$ millions of dollars 

– General Services Administration for acquisition of products and 

services by federal agencies and employees 

– Access Board for accessibility requirements 

– Department of Energy/EPA Energy Star 

– Health & Human services to define procedures and products covered 

under government health care programs 

– any government purchase or preference for environmentally friendly 

products and services 
The report states: 

Guidance on the use of voluntary standards in procurement applications may be 

found in the General Services Administration’s Federal Standardization Manual. 

The manual notes that when a government agency is in the initial stages of 

developing a Federal Product Description (FPD)14, the use of voluntary 

standards are to be given preference over the development of government 

unique FPDs. The agency is required to do extensive research to determine if a 

voluntary standard exists that will satisfy its needs and is consistent with 

applicable laws and regulations. If an existing voluntary standard will satisfy the 

agency’s needs, the agency must adopt the standard by one of the following 

processes: 

 

Either the procedure must satisfy the adoption requirement established in OMB 

Circular A-119, or 

The agency may formally adopt the standard in whole and issue an adoption 

notice, or 

The agency may reference the voluntary standard in whole or in part in its 

procurement documents or regulations. 

It is also the U.S. Department of Defense’s (DoD) policy to make maximum use 

of non-Government standards and commercial technologies, products, and 

practices. DoD is committed to the adoption and use of voluntary consensus 

standards (defined in DoD 4120.24-M as "non-Government standards") where 

practical, instead of developing new or updating existing government 

specifications and standards. 

The United States has supported the Agreement on Government procurement of the World 

Trade Organization. The table below presents the text of Article X Technical 

Specifications and Tender Documentation pertaining to standards.

GPA/W/297 11 December 2006 Revision of the agreement on 

government procurement as at 8 December 2006 

GPA/W/297 at http://www.gtwassociates.com/answers/GPAW297.pdf

Prepared by the Secretariat 

 

This document contains the text of the revision of the 1994 Agreement on Government 

Procurement which was referred to by the Chairman of the Committee on Government 

Procurement in the formal meeting of the Committee on the afternoon of Friday, 8 December 

2006 

 
Article X Technical Specifications and Tender Documentation

 

Technical Specifications 

1. A procuring entity shall not prepare, adopt, or apply any technical specification or 

prescribe any conformity assessment procedure with the purpose or the effect of creating 

unnecessary obstacles to international trade. 

2. In prescribing the technical specifications for the goods or services being procured, a 

procuring entity shall, where appropriate: 

(a) specify the technical specification in terms of performance and functional 

requirements, rather than design or descriptive characteristics; and 

(b) base the technical specification on international standards, where such exist; 

otherwise, on national technical regulations, recognized national standards, or 

building codes. 

3. Where design or descriptive characteristics are used in the technical specifications, a 

procuring entity should indicate, where appropriate, that it will consider tenders of equivalent 

goods or services that demonstrably fulfil the requirements of the procurement by including 

words such as "or equivalent" in the tender documentation. 

4. A procuring entity shall not prescribe technical specifications that require or refer to a 

particular trademark or trade name, patent, copyright, design, type, specific origin, producer, or 

supplier, unless there is no other sufficiently precise or intelligible way of describing the 

procurement requirements and provided that, in such cases, the entity includes words such as 

"or equivalent" in the tender documentation. 

5. A procuring entity shall not seek or accept, in a manner that would have the effect of 

precluding competition, advice that may be used in the preparation or adoption of any technical 

specification for a specific procurement from a person that may have a commercial interest in 

the procurement. 

6. For greater certainty, a Party, including its procuring entities, may, in accordance with 

this Article, prepare, adopt, or apply technical specifications to promote the conservation of 

natural resources or protect the environment. 

Recommendation Seven : All United States agencies preparing procurement technical 

specifications and standards should assure compliance their with the provisions of the OMB 

Circular A-119 Federal Participation in the Development and Use of Voluntary Consensus 

Standards and in Conformity Assessment Activities including: 

“Your agency must use voluntary consensus standards, both domestic and 

international, in its regulatory and procurement activities in lieu of governmentunique standards, unless use of such standards would be inconsistent with 

applicable law or otherwise impractical. 

Further such agencies should be informed about the expectations and relevance of Article X 

Technical Specifications and Tender Documentation in GPA/W/297 11 December 2006 

Revision of the agreement on government procurement as at 8 December 2006 
Role of government in national standards policy and trade 

In a speech 1 October 2010 http://www.wto.org/english/news_e/sppl_e/sppl173_e.htm WTO 

Director-General Pascal Lamy outlined the profound changes which have occurred in the last 

decades in the patterns of world trade, as well as the challenges this dramatic reshaping pose to the 

governance of multilateral trade. 

"The Doha Round marks a transition from the old governance of the old trade 

order to the new governance of a new trade order“ 

 

“The dramatic reduction in border barriers has exposed deeper structural 

differences between economies - in standards, regulations or legal systems - 

that are generating new "systems frictions" and, because they are more tied up 

with values-based domestic objectives, are proving harder to resolve. 

GTW Associates observes increasing evidence of the use of standards, regulations and legal 

systems to impede the acceptance of both US Goods and services in many markets. 

The WTO Committee on Technical Barriers to Trade receives concerns called “Specific Trade 

Concerns” expressed by members of the WTO. In 2009, 75 specific trade concerns were 

raisued within the TBT committee. The figure illustrates the number of specific trade concerns 

discussed each year since 1995 (new and previously raised) 

Number of specific trade concerns (STCs) raised per year in the WTO TBT Committee 

(WTO G/TBT/28)

According to the USTR report commenting on the original WTO data, 

“The rise in the number of concerns raised reflects several factors – including an 

increase in the number of proposed measures that WTO Members have notified 

to the WTO, a heightened focus on standards-related activities, increased 

concern that standards-related measures may be used as a form of disguised 

protectionism, and an increasing perception that discussions in the TBT 
Committee, as well as bilateral discussions on the margins of Committee 

meetings, can lead to results in addressing trade concerns” 

The TBT committee also receives notifications by members of new and revised technical regulations and conformity 

assessment procedures. Since the entry into force of the Agreement on 1 January 1995, up to 31 December 2009, 

11,564 notifications and 1,576 addendum/corrigenda to these notifications have been made by 110 Members In 2009, 

Members submitted 1,490 new notifications (including revisions) of technical regulations and conformity assessment 

procedures along with 401 addendum/corrigenda to notifications. 

Notifications to the WTO of technical regulations and conformity assessment procedures 

(WTO G/TBT/28)

0

200

400

600

800

1000

1200

1400

1600

1800

2000

1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

Notification Addenda/Corrigenda

Today standards are the new “Wolf in Sheep’s clothing. 
The US government is in a powerfully strong position to assist US businesses address and 

resolve the increasing threats of existing and potentially new non tariff barriers to trade in US 

products and services. 

For example in the Spring of 2010 the US government stated in TN/MA/W/138 28 June 2010 

MARKET ACCESS FOR NON-AGRICULTURAL PRODUCTS International Standards 

Communication from the United States a powerful case for the global trade policy community 

not to name particular international standards bodies for preferable acceptance as the source 

and basis of standards. A contrary decision would have disadvantaged the use of many 

standards from standards organizations headquartered in the United States 

1. Voluntary standards are tools used to meet specific, often highly 

technical, objectives. The WTO Agreement on Technical Barriers to Trade 

(TBT Agreement) recognizes the important role that international 

standards can play in meeting regulatory objectives and facilitating trade. 

However, several proposals related to the TBT Agreement in the 

NAMA/NTB negotiations – regarding autos and electronics in particular – 

seek to designate particular bodies as "relevant international standardizing 

bodies" as a means to promote greater harmonization. The United States 

supports efforts to facilitate trade through greater harmonization where 

appropriate, but does not support designating particular bodies as 

"relevant international standardizing bodies" in these sectors, or any 

sector, as a sensible, or indeed advisable, means to promote the goal of 

greater harmonization. Fundamentally, whether a standard is relevant, 

effective and appropriate in fulfilling a Member’s particular regulatory or 

market need is not determined by which body developed it. Further, 

greater harmonization results from increased worldwide use of a standard, 

and that use is directly attributable to relevance, effectiveness and 

appropriateness of the standard itself in meeting a specific need. 

25. In this regard, it is notable that the bodies that the proposals would 

designate are ones in which the EU, in many instances, has a greater 

voice than other Members, or reflect infrastructure or conditions prevalent 

in Europe but not elsewhere. This is true of the UNECE 1958 Agreement, 

as well as ISO and IEC, where the combination of the Vienna and 

Dresden Agreements and the participation of 27 EU member states can 
result in the EU having greater influence in ISO and IEC than other 

countries. While we presume the intention of the proposals’ drafters was 

not to enshrine bodies in which they have greater influence in a WTO text, 

we would be remiss if we did not ask Members to consider that 

designating bodies would have this result. 

During the March WIPO Standing Committee on the Law of Patents (SCP) , 2009 the head 

of the United states delegation read a contribution (see USPTO Statement to WIPO at 

http://www.gtwassociates.com/alerts/PTOtoWIPO.pdf) which stated: 

• The U.S. is a market – driven, highly diversified society, and its standards 

system 

encompasses and reflects this framework. 

• Individual standards typically are developed in response to specific concerns 

and constituent issues expressed by both industry and government. 

• The United States is not in favor of a mandatory single set of uniform guidelines 

which will deprive the U.S., its diverse standard setting community and its 

innovative industries of its current flexibility in developing standards according to 

different processes and policies. These are driven by the objective of the 

particular standards project and the related market factors. 

• The U.S. government recognizes its responsibility to the broader public interest 

by providing financial and legislative support for, and by promoting the principles 

of, our standards setting system globally. U.S. industry competitiveness depends 

on standardization, particularly in sectors that are technology driven. 

The ANSI released on February 3 2011 the third edition of the United States Standards 

Strategy indicating its Support for U.S. Competitiveness and International Trade The 

stategy articulates the principles and tactics that guide how the United States develops 

standards and participates in the international standards-setting process. 

The first goal states: Strengthen participation by government in development and use of 

voluntary consensus standards through public-private partnerships

The fourth goal states: Actively promote the consistent worldwide application of 

internationally recognized principles in the development of standards 

The sixth goal states: Work to prevent standards and their application from becoming 

technical trade barriers to U.S. products and services 

In all of the above the United States government plays a key role. 

Recommendation Eight: The US government should continue international efforts to help 

prevent use of standards, regulations and legal systems to impede the acceptance of both US 

Goods and services in many markets. The US government should prepare an interagency plan 

how it will translate the goals from the February 3 2011 the third edition of the United States 

Standards Strategy into specific projects and dedication of government resources to help 

achieve the goals. 

The National Conformity Assessment Principles for the United States at 

http://publicaa.ansi.org/sites/apdl/Documents/News%20and%20Publications/Brochures/NCAP%

20second%20edition.pdf were approved by the ANSI Board of Directors on May 3, 2007. The 8 

principles are: 

1. Conformity assessment requirements and procedures do not create 

unnecessary obstacles to national/international trade.3 
2. Conformity assessment requirements and procedures are open and 

transparent to all applicants and provide them with equal treatment. 

All parties desiring to have their products, processes, services or personnel 

assessed for compliance with relevant requirements are allowed to make 

application to any conformity assessment body and have their applications 

accepted and processed in a reasonable time period. 

3. Conformity assessments are competently conducted and based on 

appropriate standards requirements and procedures. Conformity assessment 

requirements and procedures are based on international guides and standards to 

the extent feasible. 

Organizations are encouraged to demonstrate their competency to conduct 

conformity assessment activities using accepted standards and requirements 

for conformity assessment, either through formal recognition or accreditation 

activities or by maintaining adequate records and documentation that are 

available for public review. 

4. The characteristics of a sector and the associated risks of the product drive 

the conformity assessment requirements and procedures. 

5. Information on all conformity assessment requirements and procedures for 

obtaining conformity assessments are publicly available. Information on costs 

and processing times are available at any time to all applicants.

6. Conformity assessment procedures are completed promptly and efficiently. 

Accurate and timely information on the status of ongoing conformity assessments 

is provided to applicants on request. 

7. Information requirements are limited to what is necessary to assess conformity 

and determine fees. Protective measures are taken so that confidential or 

proprietary information is not communicated to any person or organization not 

having legal right to such information. 

8. All applicants who apply for conformity assessment are treated equally with 

respect to the imposition of any fees charged. When fees are imposed, they 

are comparable for all applicants, taking into account communication, 

transportation and other costs arising from differences between location of 

facilities of the applicants and the conformity assessment bodies. Fees are not 

imposed in a manner that restricts marketplace competition or creates 

unnecessary obstacles to trade. 

The National Institute of Standards and Technology Guidance on Federal Conformity 

Assessment Activities was published in the US Federal Register in August 2000 and is 

available at http://gsi.nist.gov/global/docs/FR_FedGuidanceCA.pdf According to its summary: 

This document contains final policy guidance on Federal agency use of 

conformity assessment activities. The provisions are solely intended to be used 

as guidance for agencies in their conformity assessment activities and do not 

preempt the agencies' authority and responsibility to make regulatory 

procurement decisions authorized by statute or required to meet programmatic 

objectives and requirements. 

Recommendation Nine: The US government should review the National Conformity Assessment 

Principles for the United States and contemplate its relevance as a basis for advice to federal 

agencies comtemplating conformity assessment programs. The NIST 2000 era Guidance on 

Federal Conformity Assessment Activities should be revised accordingly. Since conformity 

assessment carried out by third-party private sector organizations is well established and 

recognized by important industrial sectors and federal agencies, when there is a US 

government identified need to provide a formal assurance of the competence of conformity 

assessment bodies, accreditation by internationally recognized accreditation bodies should be 

the preferred means of assurance. Additionally the Office of Information and Regulatory Affairs 
at the Office of Management and Budget should contemplate advice to government agencies 

similar to the guidance in OMB A-119 to contemplate the role of private sector conformity 

assessment bodies in lieu of government activities. 
Role of government as “convener” of stakeholders 

The 12th goal of the third edition of the United States Standards Strategy indicating its 

Support for U.S. Competitiveness and International Trade is to address the need for 

standards in support of emerging national priorities The 12th goal states: 

The U.S. standardization system has contributed significantly to meeting a 

diverse range of private- and public-sector needs in a variety of industries. ANSI 

has risen to the challenge posed in areas as diverse as homeland security and 

nanotechnology through the creation of standards panels that bring together all 

affected interest areas, both public and private sector, to achieve maximum 

impact for standards efforts. With threats to our national security and the 

development of new technologies that promise economic growth and improved 

quality of life, the U.S. standardization system must be prepared to respond to 

emerging national priorities as they are identified. Tactical initiatives include: 

n Government at all levels should seek early collaboration with industry and 

standards developers to identify standards needed to meet emerging national 

priorities. 

n ANSI should provide active coordination, where necessary, in areas relating to 

emerging national priorities to promote information sharing across all affected 

interest areas and minimize overlap and duplication of standards-related efforts. 

n Standards developers should proactively identify standards work in existence 

or underway that could support emerging national priorities. 

n Industry should participate actively in efforts to identify needed standards and 

in the timely development of those standards. 

n Government, industry, and standards developers should be proactive in 

addressing international implications of standards in support of national priorities. 

In a blog Posted by Aneesh Chopra on November 19, 2010 at 10:18 AM EST Government as 

Convener - Fostering Entrepreneurial Ecosystems at 

http://www.whitehouse.gov/blog/2010/11/19/government-convener-fostering-entrepreneurialecosystems , Mr Chopra stated: 

The Obama Administration is working with the private sector to unlock market 

opportunities in key growth sectors of the economy -- sectors like the smart grid 

and healthcare IT that will drive economic growth, innovation, and jobs. Through 

collaboration with the National Institutes for Standards and Technology, and the 

Departments of Energy and Health & Human Services, entrepreneurs have 

worked alongside others in the private sector to define interoperability standards 

in areas like consumer energy usage information and safe, secure clinical 

messaging among providers, patients, labs and pharmacies. Launched in March 

2010, the Direct Project achieved industry consensus on technical specifications 

within 90 days and is publishing a reference application that can be freely 

available for any entrepreneur to reuse in the development of a new innovative 

healthcare application. 

 
Indeed one of the themes of the January 25 Roundtable on Federal Government Engagement 

in Standards described at  http://nist.granicus.com/MediaPlayer.php?publish_id=4 was the 

potential role of government as convener. 

A blog by Aneesh Chopra and Patrick Gallagher on January 07, 2011 at 10:29 AM EST at 

http://www.whitehouse.gov/blog/2011/01/07/setting-standards-we-want-hear-you continues: 

This week President Obama signed the America COMPETES Act, which 

supports an array of strategies for maintaining America’s leadership in science 

and technology. Among the Act’s important provisions is one encouraging the 

National Institute of Standards and Technology (NIST) to expand upon its work 

with the private sector to develop new standards for a range of vital industries 

such as emergency communications and tracking, green manufacturing, high 

performance green building construction, and cloud computing. 

GTW Associates both monitors and participates in such public policy and national standards 

strategy activities as mentioned above. The government has important vested stakeholder 

interests in the regulatory and procurement and international trade considerations underlying 

these important topics. The government must be careful to remain responsive to these 

primary missions and responsibilities however and not venture too far into the “role of 

convener” particularly if offering such convener opportunities competes with numerous private 

sector venues and fora offering similar neutral “roles of convener.” The current United States 

budget crisis merely underscores this point of principle. 

Recommendation Ten: The US government should review the 12th goal of the third edition of 

the United States Standards Strategy indicating its Support for U.S. Competitiveness and 

International Trade to address the need for standards in support of emerging national 

priorities and formally state support for the role of the private sector American National 

Standards Institute in the 12th goal to: 

... provide active coordination, where necessary, in areas relating to emerging 

national priorities to promote information sharing across all affected interest 

areas and minimize overlap and duplication of standards-related efforts
Consideration of Intellectual Property questions 

The matter of Intellectual property rights and standards setting within the context of 

government interests and policy is fraught with complexity. 

The term "intellectual property" covers quite separate issues of patents, copyrights, & trade 

marks and The implications for standards activity from these are distinct from one another. The 

page at http://www.gnu.org/philosophy/not-ipr.html Did You Say “Intellectual Property”? It's a 

Seductive Mirage states nicely: 

"If you want to think clearly about the issues raised by patents, or copyrights, or 

trademarks, or various other different laws, the first step is to forget the idea of lumping 

them together, and treat them as separate topics. The second step is to reject the 

narrow perspectives and simplistic picture the term "intellectual property" suggests. 

Consider each of these issues separately, in its fullness, and you have a chance of 

considering them well. " 

In the interests of focus GTW will address in this section only the subset of the possible issues 

of Intellectual property related to Patents & Patent Claims and standards setting. Simply stated 

the issues derive from the delicate task enabling and providing opportunity for those who wish 

to implement a standard to have reasonable access to a license to a essential patent claim(s) 

required for compliance with that standard ... whilst at the same time preserving the rights of the 

patent holder often created at great expense through extensive research and development. 

GTW Associates maintains a database of 46 patent policies of standards developers 

Intellectual Property Rights Policies of selected standards developers current as of March 

2011 at http://www.gtwassociates.com/answers/IPRpolicies.html and has extensive 

experience reviewing and developing such patent policies 

This is not a “new issue” The earliest record of an attempt to address the matter by the then 

American Standards Association was a declaration in August 17, 1932 by the Committee on 

Procedure: 

That as a general proposition patented designs or methods should not be 

incorporated in standards. However, each case should be considered on its 

merits, and if a patentee be willing to grant such rights as will avoid monopolistic 

tendencies, favorable consideration to the inclusion of such patented designs in 

a standard might be given.

Below printed in bold text are the questions within the Federal register request related to 

intellectual property rights followed by answers in regular text 

How does the need for access to intellectual property rights by Federal 

agencies factor into the use or development of standards? 

To what extent, if any, has the development, adoption or use of a standard, 

by Federal agencies in this technology sector been affected by holders of 

intellectual property? How have such circumstances been addressed? 
The US Federal Communications Commission (FCC) is one of two 

United States regulatory agencies with a patent policy applicable to regulation setting 

[3 F.C.C. 2d Revised Patent Procedures of the Federal Communications Commission 

See Appendix Five Revised Patent Procedures of the Federal Communications 

Commission 3 F.C.C. 2d Excerpted from pages 26 and 27 and 28 

A second regulatory agency with such a policy is the EPA Mandatory Patent Licenses 

Under Section 308 of the Clean Air Act See Appendix Six Mandatory Patent 

Licenses Under Section 308 of the Clean Air Act TITLE 40--PROTECTION OF 

ENVIRONMENT CHAPTER I--ENVIRONMENTAL PROTECTION AGENCY PART 

95_MANDATORY PATENT LICENSES 

 

 FCC addresses the potential role of patents that may be needed to practice one of its 

mandatory regulation through federal register announcements seeking public disclosure 

of relevant patents and calls for feedback about the access to such patents by potential 

practitioners of the standard. 

See for example the FCC report and order In the Matter of Digital Audio Broadcasting 

Systems And Their Impact on the Terrestrial Radio Broadcast Service issued in May 

2007 taking the next step in implementing a mandatory standard for digital radio 

broadcasting. In paragraph 101 the FCC mentions its interest in the royalties the patent 

holder iBiquity will ask of the broadcaster licensees from FCC. 

1. The iBiquity IBOC DAB system uses patented technologies. This 

requires IBOC licensees to pay licensing fees to the patent holders. The 

Commission stated in the DAB R&O that during the interim DAB operation 

period, we will monitor the behavior of the patent holders to determine if the 

required licensing agreements are reasonable and non-discriminatory and that 

we will seek additional public comment on this matter as required.1 In the DAB 

FNPRM, we sought further comment on iBiquity’s conduct regarding licensing 

agreements in the interim DAB operating period.2 Although iBiquity has pledged 

to adhere to the Commission’s patent policy,3 certain parties commented that 

iBiquity might resort to unreasonable and discriminatory licensing fees once DAB 

receivers have become widely available.4 We find that iBiquity has abided by 

the Commission’s patent policy up to this point in the DAB conversion process. 

Therefore, we do not believe that it is appropriate at this time for us to adopt 

regulations governing IBOC licensing and usage fees. If we receive information 

that suggests we need to explore this issue further, especially in connection with 

the adoption of the NRSC-5 standard, we will take appropriate action at that time.

Or for example the First FCC NPRM November 8, 1991 in proceeding 87 – 268 in 

the matter of Advanced Television Systems and Their Impact upon the existing 

Television Broadcasting Service. See section VII paragraph 46 pages 23 and 24 that 

proponents of a system will adopt a reasonable patent structure and royalty charging 

policy

 

1 17 FCC Rcd at 20002. 

2 19 FCC Rcd at 7527. 

3 iBiquity Comments at 25; see also Revised Patent Procedures of the Federal Communications Commission, 3 

FCC 2d 26 (1966). 

4 Douglas E. Smith Comments at 5; Radio Kings Bay, Incorporated Comments at 5; and Mohnkern Electronics, Inc. 

Reply Comments at 1. 
Or the second FCC Report and Order and Second FCC NPRM April 4 1992 Section VI 

paragraph 68 pages 44 & 45 asking if there is need for further regulation beyond the 

American National Standards Institute patent policy to ensure that reasonable patent 

licensing policies are indeed adopted 

Excerpted from from Testimony & FCC Rulemaking concerning essential patents in 

proceeding 87 – 268 in the matter of Advanced Television Systems and Their Impact 

upon the existing Television Broadcasting Service at 

http://www.gtwassociates.com/alerts/PatentLicensingforHDTVstandard.doc 

The US Federal Trade Commission prepared a helpful report addressing standards 

activities in ANTITRUST ENFORCEMENT AND INTELLECTUAL PROPERTY RIGHTS: PROMOTING 

INNOVATION AND COMPETITION at 

http://www.ftc.gov/reports/innovation/P040101PromotingInnovationandCompetitionrpt07

04.pdf According to its introduction CHAPTER 2: COMPETITION CONCERNS WHEN 

PATENTS ARE INCORPORATED INTO COLLABORATIVELY SET STANDARDS 

addresses: 

This Chapter focuses on antitrust issues that may arise from collaborative 

standard setting when standards incorporate technologies that are protected by 

intellectual property (“IP”) rights. These issues involve the potential for “hold up” 

by the owner of patented technology after its technology has been chosen by the 

SSO as a standard and others have incurred sunk costs which effectively 

increase the relative cost of switching to an alternative standard. 

The report presented and analyzed the competitive concerns associated with one 

approach proposed as a solution to the problem of “hold up” USING EX ANTE 

LICENSING N E G O T I A T I O N S T O MITIGATE HOLD UP 

The FTC concluded: 

The Agencies take no position as to whether SSOs should engage in joint ex ante 

discussion of licensing terms but recognize that joint ex ante activity to establish 

licensing terms as part of the standard-setting process will not warrant per se 

condemnation. Such activity might mitigate the potential for IP holders to hold up those 

seeking to use a standard by demanding licensing terms greater than they would have 

received before their proprietary technology was included in the standard. 

 
 

Are there particular obstacles that either prevent intellectual property 

owners from obtaining reasonable returns or cause intellectual property 

owners to make IP available on terms resulting in unreasonable returns 

when their IP is included in the standard? 

What strategies have been effective in mitigating risks, if any, associated 

with hold-up or buyers' cartels? 

Several countries have adopted or have proposed adoption of standards policies 

which have or would have a negative impact upon the IP rights of US patent holders of 

relevant technology. 

Intellectual property right not an end in itself: India

Geneva, Sep 23 (PTI) India says intellectual property rights should not become "an end 

in itself" at a time when countries are facing grave challenges in the areas of health 

and climate challenge ...Geneva, Sep 23 (PTI) 

New Delhi will also consider granting compulsory licences for patented green 

technologies or pharmaceutical products or IT software. 

24/09/2010 MSN News 

http://news.in.msn.com/international/article.aspx?cp-documentid=4420086 

• India: Policy on Open Standards for E-Governance issued by Min. of 

Communications and Information Technology (May 2010) 

– Egovernment Standards Portal 

http://egovstandards.gov.in/index_html

• Government of India “shall adopt a Single and Royalty-Free (RF) Open 

Standard progressively for a ‘specific purpose with in a domain’ to meet 

the laid down objectives of the Policy”(which are to facilitate 

interoperability and to be technology-neutral) 

• May actually have the unintended consequence of less interoperability 

since often many global ICT standards may contain components which 

also permit FRAND/RAND based technology and/or may reference other 

standards that might not necessarily be based on RF-based licensing 

commitments 

To ensure Interoperability among e-Governance applications, the Government of India 

has setup an Institutional mechanism for formulation of Standards through collaborative 

efforts of stakeholders like Department of Information Technology(DIT), National 

Informatics Centre (NIC), Standardization Testing and Quality Certification( STQC), 

other Government departments, Academia, Technology Experts, Domain Experts, 

Industry, BIS, NGOs etc. The 
Egovernment Standards Portal http://egovstandards.gov.in/index_html 

 

The Government of India has launched the National e-Governance Plan (NeGP) with the 

intent to support the growth of e-governance within the country. The Plan envisages 

creation of right environments to implement G2G,G2B,G2E and G2C services. 

GoI shall adopt a Single and Royalty-Free (RF) Open Standard progressively for a 

“specific purpose with in a domain” (herein after referred to as “Area”), to meet the laid 

down objectives of the Policy. 

The UK government issued procurement guidance defining open standards as having 

"intellectual property made irrevocably available on a royalty free basis". The document 

Procurement Policy Note – Use of Open Standards when specifying ICT requirements.

published by the Cabinet Office, applies to all government departments and states: 

when purchasing software, technology infrastructure, security or other goods and 

services, departments should "wherever possible deploy open standards". 

The guidance goes on to further define open standards: 

 • result from and are maintained through an open, independent process; 

 • are approved by a recognised specification or standardisation organisation, for 

example W3C or ISO or equivalent. (N.B. The specification/standardisation must be 

compliant with Regulation 9 of the Public Contracts Regulations 2006. This regulation 

makes it clear that technical specifications/standards cannot simply be national 

standards but must also include/recognise European standards); 

• are thoroughly documented and publicly available at zero or low cost 

Fortunately US government policy with regard to software procurement is more closely 

aligned with the competitive forces of the US free market system. See 

January 7, 2011 MEMORANDUM FOR CHIEF INFORMATION OFFICERS AND 

SENIOR PROCUREMENT EXECUTIVES FROM: Vivek Kundra 

Daniell. Gordon Victoria A. Espinel SUBJECT: Technology Neutrality at 

http://cio.gov/documents/technology-neutrality.pdf with states: 

In the context of developing requirements and planning acquisitions for software, 

for example, this means, as a general matter, that agencies should analyze 

alternatives that include proprietary, open source, and mixed source 

technologies. This allows the Government to pursue the best strategy to meet its 

particular needs. 

 

GTW Associates addressed issues with China’s CNIS Draft Disposal Rules For Patents 

In Standards and China’s SAC Proposed Regulations For Patent-Involving National 

Standards in “Inside Views” editorials at IP-Watch 
Concerns with China approaches to procedures addressing patents in standards 

setting 

April 2010 China’s Latest Draft Disposal Rules For Patents In Standards: A 

Step Forward? http://www.ip-watch.org/weblog/2010/04/01/china’s-latest-draft-disposalrules-for-patents-in-standards-a-step-forward/ The proposed CNIS Disposal Rules 

strive to align with the harmonised patent policy of ISO/IEC/ITU.19 The concepts of 

disclosure and licensing are addressed at many stages in the standards process using 

a RAND licensing framework. By distinguishing between technically essential patents 

and technically essential patent claims in relation to disclosure and licensing statement 

obligations, clarifying the patent licensing declaration form and required supporting 

documentation, and to whom the policy applies, CNIS will be able to significantly 

enhance the current proposed rules 

December 21 Take Two: China’s Proposed Regulations For Patent-Involving National 

Standards 

 http://www.ip-watch.org/weblog/2009/12/21/take-two-china%e2%80%99s-proposedregulations-for-patent-involving-national-standards/ To be viable and relevant, 

standards whether mandatory or not must often make use of technology that itself often 

involves patents. The SAC patent policy proposal is unbalanced against an intellectual 

property owner’s rights and will discourage participation from owners of intellectual 

property within and outside of China. Implementation of the SAC patent policy proposal 

as worded will place China in a position to have to accept and promote inferior 

technologies and/or more costly implementations for important standards 

The notion of serious problems with patent hold up in standards setting that call for 

government solutions has stimulated even international organizations such as the World 

Intellectual Property Rights Organizaiton to look into the matter. In a report 

STANDARDS AND PATENTS Document SCP/13/2 

http://www.wipo.int/edocs/mdocs/scp/en/scp_13/scp_13_2.pdf paragraph 150 states: 

150. When technologies under standards are protected by patents, some 

specific competition concerns may arise. Once a standard has been adopted 

covering a technology under patent protection, a patentee may be in a position to 

demand higher royalties or other unreasonable terms and conditions for licensing 

his technology to the implementers of such a standard in view of the absence of 

alternative technology.See also 

However there is little compelling evidence other than anecdotes there is a widespread 

global problem needing new government attention above and beyond current 

government powers. The United States delegation to the WIPO committee on the law of 

patents stated during formal discussions of the SCP/13/2 report During the March 

WIPO Standing Committee on the Law of Patents (SCP) , 2009 the head of the United 

states delegation read a contribution (see USPTO Statement to WIPO at 

http://www.gtwassociates.com/alerts/PTOtoWIPO.pdf) which stated: 

• The United States remains a strong supporter of our policies that allow U.S. 

standards developers to participate in international standards development 

activities without jeopardizing their patents, copyrights and trademarks. 

• Today, more than 16,455 standards are approved as International Standards 

(with about 1800 more in the pipeline) and 11,500 of these as American National 

Standards. Thousands more are adopted by industry associations, consortia, and 

other Standard Setting Organizations on a global basis. 
• Yet the number of disputes that result in litigation per year is typically in single 

digits, and the vast majority of these cases involve specific fact patterns. In other 

words, there is NOT a crisis, as claimed by some, in standard setting. 

A study on the interplay between standards and intellectual property rights (IPRs) 

Preliminary Results commissioned by the European Commission whose preliminary 

findings were shared at a public workshop November 2010 in Brussels found 

government interest in influencing these matters via public procurement and legislation 

approaches. How ever the main findings suggest direct government involvement in 

solutions is not perceived as helpful. 

EC Study on the interplay between standards and intellectual property rights 

(IPRs) Preliminary Results Open Workshop organised by DG Enterprise of the 

European Commission Charlemagne Building, Room Lord Jenkins, 170 rue de la Loi, 

1040 Brussels November 23th 2010 http://ec.europa.eu/enterprise/policies/europeanstandards/files/standards_policy/ipr-workshop/ipr_presentation_interim_results_23-11-

2010_en.pdf

Main Findings and Possible Implications 

• No significant differences in the perception of IPR owners regarding IPR policies 

between SSOs, standards users without IPR favour the policies of informal 

SSOs 

• SSOs should improve transparency, but not necessarily extend their activities 

regarding IPR in general, however taking care of implementation problems 

already in the processes on a voluntary and member driven basis within the 

realm of fair compensation 

• Patent pools are solutions under specific conditions 

• Disputes are the exception, but might increase due to more players, transfers of 

IPRs and heterogeneous IPR regimes, but is often not specific to Standardization 

• Direct involvement of governments is not perceived as solution, e.g. the ex ante 

disclosure of licensing condition is not perceived as being practical 

• Indirect influence of governments via public procurement and legislation is 

controversial among companies but considered by government 

• In general, patent offices should improve patent quality 

 

A September 2010 paper How Many Standards in a Laptop? (And Other Empirical 

Questions) similiarly concluded: 

The merits of RAND and RF IPR models are fiercely debated by their respective 

proponents. Our data suggests that historically RAND has been effective in the 

computing sector, if measured by implementation of associated standards: we see that 

75% of the standards we examined were developed under RAND terms
How Many Standards in a Laptop? (And Other Empirical Questions)

Biddle, Brad, White, Andrew and Woods, Sean, (September 10, 2010). Available at 

SSRN: http://ssrn.com/abstract=1619440 

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1619440

An empirical study which identifies 251 technical interoperability standards 

implemented in a modern laptop computer, and estimates that the total number of 

standards relevant to such a device is much higher. Of the identified standards, the 

authors find that 44% were developed by consortia, 36% by formal standards 

development organizations, and 20% by single companies. The intellectual property 

rights policies associated with 197 of the standards are assessed: 75% were 

developed under “RAND” terms, 22% under “royalty free” terms, and 3% utilize a 

patent pool. The authors make certain observations based on their findings, and 

identify promising areas for future research. 

The preponderance of RAND as IPR model. The merits of RAND and RF IPR 

models are fiercely debated by their respective proponents. Our data suggests that 

historically RAND has been effective in the computing sector, if measured by 

implementation of associated standards: we see that 75% of the standards we 

examined were developed under RAND terms (see Figure 2). Conceivably the 

financial industry axiom that “past performance is not indicative of future results” may 

be applicable, given the emergence of open source, increasing patent litigiousness, 

or other factors. Further, the practical impact of RAND policies seems to be different 

in different contexts (e.g., IETF standards, while nominally RAND, appear to be 

largely RF in practice; other RAND standards, such as the IEEE’s 802.11 standards, 

are the subject of licensing and patent litigation). Nonetheless, the strong 

dominance of RAND in our set of successful (i.e., implemented) standards is 

notable. Our data also suggest that patent pools, to date, have not played a 

significant role for at least the computing sector of the ICT industry. 

The NATO standards organization completed in 2008 NATO COMMITTEE FOR 

STANDARDISATION NATO INTELLECTUAL PROPERTY RIGHTS POLICY 

FOR NATO STANDARDS AND NATO DISPOSITIONS RELATED TO THE 

ISSUE OF COPYRIGHTS FOR NATO STANDARDS DOCUMENT C-
M(2008)0017 Silence Procedure ends: 28 Mar 2008 16:00 See Appendix 

Seven 

12. When essential protected material relating to a particular NATO 

standardization document is brought to the attention of NSA, the Civil 

Standards Co-ordinator under NSA P&C Branch shall immediately request 

the holder, who can be either a group participant or a third party to give 

within three months an undertaking in writing that the holder is prepared to 

grant irrevocable licence on fair, reasonable and non-discriminatory terms 

and conditions for all such IPRs to at least allow the use of methods and 

concepts. 

13. At the request of a NATO nation, the NCS or the NAC for a specific 

NATO 

standardization document or a class of NATO standardization documents, 

NSA shall arrange to have carried out in a competent and timely manner 

an investigation including an IPR search, with the objective of ascertaining 

whether lPRs exist or are likely to exist which may be or may become 

essential to a proposed NATO standardization documents and the 

possible terms and conditions of licences for such IPRs.

14. Any published (promulgated4) NATO standardization document shall 

include information pertaining to how to obtain licences for Essential IPR. 

Recommendation Eleven: The US government should stimulate and encourage sharing of 

experiences, practices and policies regarding patents in regulation and procurements by 

agencies with such experience such as the FCC and procurement agencies such as GSA and 

DOD. 

Recommendation Twelve: The US government should assist owners of intellectual property 

resist and overturn foreign government’s procurement or regulatory policies relating to 

incorporation of patents in standards that unfairly compromise the abilities of the US owners 

of patents to obtain a fair return on their investments. 

Recommendation Thirteen : The US government should represent its interests in the setting of 

responsive patent policies by active participation in the activities of the diverse population of 

standards developing organizations. The US government should strong resist policy decisions 

that would have the effect to favor the patent policy of one standards developing organization 

compared to another excepting any cases that may entail antitrust or competition irregularities. 
List of Recommendations

Recommendation One: Continue to base US federal government support of and participation in 

private sector standards activity consistent with the The NTTAA and the Trade Agreements Act 

of 1979 

Recommendation Two : Continue to base US federal government support of and participation 

in private sector standards activity consistent with the NTTAA and the (OMB) Circular A-119, 

Federal Participation in the Development and Use of Voluntary Consensus Standards and in 

Conformity Assessment Activities 

Recommendation Three: Increase attention to and publication about the role of private sector 

standards activity to support Sec. 4. Flexible Approaches. of the 

January 18th 2011 Executive Order 13563, Improving Regulation and Regulatory Review 

Appendix Two And the paragraph Flexible Regulatory Tools in the MEMORANDUM FOR THE 

HEADS OF EXECUTIVE DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT

REGULATORY AGENCIES M-11-10 MEMORANDUM FOR THE HEADS OF EXECUTIVE 

DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT REGULATORY AGENCIES 

FROM: Cass R. Sunstein Administrator SUBJECT: Executive Order 13563, “Improving 

Regulation and Regulatory Review” Appendix Three 

Recommendation Four: Every regulatory agency should include a description of its activity 

related to the NTTAA in proposals for new regulations or in regulatory reviews . The activity 

should be described in Federal Register notices similar to manner in which the EPA describes 

its compliance with the NTTAA the example at Appendix Four. 

Recommendation Five: Every regulatory agency should include a description of its activity 

related to the OMB Circular A-119 and TAA in proposals for new regulations or in regulatory 

reviews . The activity should be described in Federal Register notices similar to manner in 

which the EPA describes its compliance with the NTTAA in the example at Appendix Four 

Recommendation Six: The Office of Information and Regulatory Affairs at the Office of 

Management and Budget in its review of proposals from regulatory agencies should require 

information about the extent to which the proposing agency has included an investigation of the 

potential role of private sector standards activity in achieving the intended objectives. The 

review should include at a minimum the agency’s explanation of the reason voluntary standards 

activities were found not possible to use in light of the OMB Circular A-119 instruction to: use 

voluntary consensus standards, both domestic and international, in its regulatory and 

procurement activities in lieu of government-unique standards unless use of such standards 

would be inconsistent with applicable law or otherwise impractical. Further the OMB should 

review the extent to which the proposed regulatory activity is consistent with the relevant 

standards text contained in Circular A-4 September 17, 2003 TO THE HEADS OF 

EXECUTIVE AGENCIES AND ESTABLISHMENTS Subject: Regulatory Analysis The 

Presumption Against Economic Regulation and the standards related legislative obligations of 

the NTTAA and the Trade Agreements Act of 1979. 

Recommendation Seven : All United States agencies preparing procurement technical 

specifications and standards should assure compliance their with the provisions of the OMB 

Circular A-119 Federal Participation in the Development and Use of Voluntary Consensus 

Standards and in Conformity Assessment Activities including: 

“Your agency must use voluntary consensus standards, both domestic and international, 

in its regulatory and procurement activities in lieu of government-unique standards, 

unless use of such standards would be inconsistent with applicable law or otherwise 

impractical. 
Further such agencies should be informed about the expectations and relevance of Article X 

Technical Specifications and Tender Documentation in GPA/W/297 11 December 2006 

Revision of the agreement on government procurement as at 8 December 2006 

Recommendation Eight: The US government should continue international efforts to help 

prevent use of standards, regulations and legal systems to impede the acceptance of both US 

Goods and services in many markets. The US government should prepare an interagency plan 

how it will translate the goals from the February 3 2011 the third edition of the United States 

Standards Strategy into specific projects and dedication of government resources to help 

achieve the goals. 

Recommendation Nine: The US government should review the National Conformity Assessment 

Principles for the United States and contemplate its relevance as a basis for advice to federal 

agencies comtemplating conformity assessment programs. The NIST 2000 era Guidance on 

Federal Conformity Assessment Activities should be revised accordingly. Since conformity 

assessment carried out by third-party private sector organizations is well established and 

recognized by important industrial sectors and federal agencies, when there is a US 

government identified need to provide a formal assurance of the competence of conformity 

assessment bodies, accreditation by internationally recognized accreditation bodies should be 

the preferred means of assurance. Additionally the Office of Information and Regulatory Affairs 

at the Office of Management and Budget should contemplate advice to government agencies 

similar to the guidance in OMB A-119 to contemplate the role of private sector conformity 

assessment bodies in lieu of government activities. 

Recommendation Ten: The US government should review the 12th goal of the third edition of 

the United States Standards Strategy indicating its Support for U.S. Competitiveness and 

International Trade to address the need for standards in support of emerging national 

priorities and formally state support for the role of the private sector American National 

Standards Institute in the 12th goal to: 

... provide active coordination, where necessary, in areas relating to emerging national 

priorities to promote information sharing across all affected interest areas and minimize overlap 

and duplication of standards-related efforts. 

Recommendation Eleven: The US government should stimulate and encourage sharing of 

experiences, practices and policies regarding patents in regulation and procurements by 

agencies with such experience such as the FCC and procurement agencies such as GSA and 

DOD. 

Recommendation Twelve: The US government should assist owners of intellectual property 

resist and overturn foreign government’s procurement or regulatory policies relating to 

incorporation of patents in standards that unfairly compromise the abilities of the US owners 

of patents to obtain a fair return on their investments. 

Recommendation Thirteen : The US government should represent its interests in the setting of 

responsive patent policies by active participation in the activities of the diverse population of 

standards developing organizations. The US government should strong resist policy decisions 

that would have the effect to favor the patent policy of one standards developing organization 

compared to another excepting any cases that may entail antitrust or competition irregularities. 
Appendices 

Appendix One 

US-EU HIGH-LEVEL REGULATORY COOPERATION FORUM 

REPORT ON THE USE OF VOLUNTARY STANDARDS IN SUPPORT OF REGULATION IN 

THE UNITED STATES (October 2009) 

May be found at 

http://publicaa.ansi.org/sites/apdl/Documents/ANSI%20Position%20on%20Protection%20of%2

0Copyright%20for%20Standards%20Referenced%20into%20Public%20Law/Use-of-VoluntaryStandards-in-Support-of-US-Regulation%5B1%5D.pdf

Click on image below to open pdf format file. 
Appendix Two 

Executive Order Executive Order 13563, Improving Regulation and Regulatory Review 

http://www.whitehouse.gov/the-press-office/2011/01/18/improving-regulation-and-regulatoryreview-executive-order

The White House 

Office of the Press Secretary 

For Immediate Release 

January 18, 2011 

Improving Regulation and Regulatory Review - Executive Order 

 By the authority vested in me as President by the Constitution and the laws of the United 

States of America, and in order to improve regulation and regulatory review, it is hereby ordered 

as follows: 

 Section 1. General Principles of Regulation. (a) Our regulatory system must protect public 

health, welfare, safety, and our environment while promoting economic growth, innovation, 

competitiveness, and job creation. It must be based on the best available science. It must 

allow for public participation and an open exchange of ideas. It must promote predictability and 

reduce uncertainty. It must identify and use the best, most innovative, and least burdensome 

tools for achieving regulatory ends. It must take into account benefits and costs, both 

quantitative and qualitative. It must ensure that regulations are accessible, consistent, written in 

plain language, and easy to understand. It must measure, and seek to improve, the actual 

results of regulatory requirements. 

 (b) This order is supplemental to and reaffirms the principles, structures, and definitions 

governing contemporary regulatory review that were established in Executive Order 12866 of 

September 30, 1993. As stated in that Executive Order and to the extent permitted by law, each 

agency must, among other things: (1) propose or adopt a regulation only upon a reasoned 

determination that its benefits justify its costs (recognizing that some benefits and costs are 

difficult to quantify); (2) tailor its regulations to impose the least burden on society, consistent 

with obtaining regulatory objectives, taking into account, among other things, and to the extent 

practicable, the costs of cumulative regulations; (3) select, in choosing among alternative 

regulatory approaches, those approaches that maximize net benefits (including potential 

economic, environmental, public health and safety, and other advantages; distributive impacts; 

and equity); (4) to the extent feasible, specify performance objectives, rather than specifying the 

behavior or manner of compliance that regulated entities must adopt; and (5) identify and 

assess available alternatives to direct regulation, including providing economic incentives to 

encourage the desired behavior, such as user fees or marketable permits, or providing 

information upon which choices can be made by the public. 

 (c) In applying these principles, each agency is directed to use the best available techniques 

to quantify anticipated 

present and future benefits and costs as accurately as possible. Where appropriate and 

permitted by law, each agency may consider (and discuss qualitatively) values that are difficult 

or impossible to quantify, including equity, human dignity, fairness, and distributive impacts. 

 Sec. 2. Public Participation. (a) Regulations shall be adopted through a process that 

involves public participation. To that end, regulations shall be based, to the extent feasible and 

consistent with law, on the open exchange of information and perspectives among State, local, 

and tribal officials, experts in relevant disciplines, affected stakeholders in the private sector, 

and the public as a whole. 
 (b) To promote that open exchange, each agency, consistent with Executive Order 12866 

and other applicable legal requirements, shall endeavor to provide the public with an opportunity 

to participate in the regulatory process. To the extent feasible and permitted by law, each 

agency shall afford the public a meaningful opportunity to comment through the Internet on any 

proposed regulation, with a comment period that should generally be at least 60 days. To the 

extent feasible and permitted by law, each agency shall also provide, for both proposed and 

final rules, timely online access to the rulemaking docket on regulations.gov, including relevant 

scientific and technical findings, in an open format that can be easily searched and 

downloaded. For proposed rules, such access shall include, to the extent feasible and 

permitted by law, an opportunity for public comment on all pertinent parts of the rulemaking 

docket, including relevant scientific and technical findings. 

 (c) Before issuing a notice of proposed rulemaking, each agency, where feasible and 

appropriate, shall seek the views of those who are likely to be affected, including those who are 

likely to benefit from and those who are potentially subject to such rulemaking. 

 Sec. 3. Integration and Innovation. Some sectors and industries face a significant number of 

regulatory requirements, some of which may be redundant, inconsistent, or overlapping. 

Greater coordination across agencies could reduce these requirements, thus reducing costs 

and simplifying and harmonizing rules. In developing regulatory actions and identifying 

appropriate approaches, each agency shall attempt to promote such coordination, simplification, 

and harmonization. Each agency shall also seek to identify, as appropriate, means to achieve 

regulatory goals that are designed to promote innovation. 

 Sec. 4. Flexible Approaches. Where relevant, feasible, and consistent with regulatory 

objectives, and to the extent permitted by law, each agency shall identify and consider 

regulatory approaches that reduce burdens and maintain flexibility and freedom of choice for the 

public. These approaches include warnings, appropriate default rules, and disclosure 

requirements as well as provision of information to the public in a form that is clear and 

intelligible. 

 Sec. 5. Science. Consistent with the President's Memorandum for the Heads of Executive 

Departments and Agencies, 

"Scientific Integrity" (March 9, 2009), and its implementing guidance, each agency shall ensure 

the objectivity of any scientific and technological information and processes used to support the 

agency's regulatory actions. 

 Sec. 6. Retrospective Analyses of Existing Rules. (a) To facilitate the periodic review of 

existing significant regulations, agencies shall consider how best to promote retrospective 

analysis of rules that may be outmoded, ineffective, insufficient, or excessively burdensome, 

and to modify, streamline, expand, or repeal them in accordance with what has been learned. 

Such retrospective analyses, including supporting data, should be released online whenever 

possible. 

 (b) Within 120 days of the date of this order, each agency shall develop and submit to the 

Office of Information and Regulatory Affairs a preliminary plan, consistent with law and its 

resources and regulatory priorities, under which the agency will periodically review its existing 

significant regulations to determine whether any such regulations should be modified, 

streamlined, expanded, or repealed so as to make the agency's regulatory program more 

effective or less burdensome in achieving the regulatory objectives. 

 Sec. 7. General Provisions. (a) For purposes of this order, "agency" shall have the meaning 

set forth in section 3(b) of Executive Order 12866. 

 (b) Nothing in this order shall be construed to impair or otherwise affect: 

 (i) authority granted by law to a department or agency, or the head thereof; or 
 (ii) functions of the Director of the Office of Management and Budget relating to budgetary, 

administrative, or legislative proposals. 

 (c) This order shall be implemented consistent with applicable law and subject to the 

availability of appropriations. 

 (d) This order is not intended to, and does not, create any right or benefit, substantive or 

procedural, enforceable at law or in equity by any party against the United States, its 

departments, agencies, or entities, its officers, employees, or agents, or any other person. 

BARACK OBAMA 

THE WHITE HOUSE, 

January 18, 2011. 
Appendix Three 

February 3, 2011 M-11-10 MEMORANDUM FOR THE HEADS OF EXECUTIVE 

DEPARTMENTS AND AGENCIES, AND OF INDEPENDENT REGULATORY AGENCIES 

FROM: Cass R. Sunstein Administrator SUBJECT: Executive Order 13563, “Improving 

Regulation and Regulatory Review” 

http://www.whitehouse.gov/sites/default/files/omb/memoranda/2011/m11-10.pdf

Click on image below to open pdf format original document 
Appendix Four 

Federal Register / Vol. 76, No. 42 / Thursday, March 3, 2011 / Proposed Rules Revisions to the 

Unregulated Contaminant Monitoring Regulation (UCMR 3) for Public Water Systems Document 

ID: EPA-HQ-OW-2009-0090-0001 at http://edocket.access.gpo.gov/2011/pdf/2011-4641.pdf

Excerpt 

National Technology Transfer and Advancement Act Section 12(d) of the National Technology 

Transfer and Advancement Act of 1995 (‘‘NTTAA’’), Public Law 104–113 (15 U.S.C. 272 note) 

directs EPA to use voluntary consensus standards in its regulatory activities unless to do so 

would be inconsistent with applicable law or otherwise impractical. 

Voluntary consensus standards are technical standards (e.g., materials specifications, test 

methods, sampling procedures, and business practices) that are developed or adopted by 

voluntary consensus standards bodies. NTTAA directs EPA to provide Congress, through OMB, 

explanations when the Agency decides not to use available and applicable voluntary consensus 

standards. 

This proposed rulemaking involves technical standards. EPA proposes to use the methods 

developed by the Agency for the analysis of UCMR 3 contaminants. The Agency conducted a 

search of potentially applicable voluntary consensus standards and identified three major 

voluntary consensus method organizations whose methods might be acceptable for 

determinations under Unregulated Contaminant Monitoring. These organizations are Standard 

Methods, Association of Analytical Communities International, and American Society for Testing 

and Materials. 

For the majority of the parameters included in this proposed action, EPA was unable to identify 

methods from voluntary consensus method organizations that were applicable to the monitoring 

required. However, EPA identified acceptable consensus method organization standards for the 

analysis of vanadium, molybdenum, cobalt, strontium and chlorate. Therefore, EPA is proposing 

analytical methods published by EPA, Standard Methods, and American Society for Testing and 

Materials for these analytes. 

EPA welcomes comments on this aspect of the proposed rulemaking and, specifically, invites the 

public to identify potentially-applicable voluntary consensus standards and to explain why such 

standards should be 

used in this regulation. 

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Appendix Five 

Revised Patent Procedures of the Federal Communications Commission 

3 F.C.C. 2d Excerpted from pages 26 and 27 and 28 

Scanned Original Text 3 F.C.C. 2d

Federal Communications Commissions Reports FEDERAL COMMUNICATIONS 

COMMISSION Washington, D.C., 20554 December 1961 

PUBLIC Notice 

Revised Patent Procedures of the Federal Communications Commission 

The Federal Communications Commission announces that it is strengthening its patent 

procedures to assure that the availability of broadcast equipment and radio apparatus 

meeting performance standards established by the Commission’s rules and regulations 

will not be prejudiced by unreasonable royalty or licensing policies of patent holders. 

Essentially, the new procedure, which supplements existing patent procedures of long 

standing, provides for enlarging the staffing order that the Commission may keep 

currently abreast of all patents issued arid technical developments, in the 

Communications field which may have an impact on technical standards approved by 

the Commission in the various services. 

Under the Communications Act of 1934, as amended (47 U. S. C. 303 (g)), the 

Commission is charged with the responsibility to “study” new uses for radio, provide for 

experimental uses of frequencies, and generally encourage; the larger and more, 

effective use of radio in the public interest. In this connection the Commission 

promulgates technical standards; for broadcasting and other radio communication 

services to establish requirements which its licensees must meet in order to provide the 

kind and quality of service desired. Such requirements may frequently be met only by 

the use of patented equipment. Therefore, in promulgating these technical standards 

and regulations, the Commission necessarily gives consideration to the effect of patent 

rights upon the availability of equipment that will meet the specified performance 

standards. In order to determine how these rights are exercised, information relating to 

licensing and royalty agreements is essential. 

The Commission’s patent policy for a number of years has been to obtain patent 

information whenever it becomes relevant to a particular proceeding. For example, the 

Commission utilized this method of obtaining patent information from system 

proponents in recent rule-making proceedings to establish standards to permit FM 

broadcast stations to transmit stereophonic programs on a multiplex basis (docket 

13506). In addition, the Commission has required the principal common carriers, such 

as American Telephone & Telegraph Co., International Telephone & Telegraph Co., 

Radio Corp. of America, and Western Union to file semiannual patent reports. These 

procedures will continue to be utilized. 

In view of the rapid technological advances in the communications field, the 

Commission has determined to augment its staff in order to permit, a regularized, 

continuing, and current study of new technical developments relevant to its jurisdiction. 

Patent Office publications and records and technical journals will be studied and 

information of interest will be compiled in the Commission's files. Copies of relevant 
patents as issued will be secured. The Commission's staff will ascertain the 

assignment or licensing arrangements for significant patents either by examination of 

the Patent Office records or by direct inquiry to the patentee, licensees, or assignees. 

Whenever it appears that the patent structure is or may be such as to indicate 

obstruction of the service to be provided under the technical standards promulgated by 

the Commission, this fact will be brought to the Commission's attention for early 

consideration and appropriate action. 

Through these revised and strengthened procedures, the Commission believes that it 

will be able to secure the information necessary to protect fully the public interest in this 

all-important area. 
Appendix Six 

Mandatory Patent Licenses Under Section 308 of the Clean Air Act TITLE 40--

PROTECTION OF ENVIRONMENT CHAPTER I--ENVIRONMENTAL PROTECTION 

AGENCY ) PART 95_MANDATORY PATENT LICENSES 

http://www.gtwassociates.com/answers/cases/epamandatorypatentlicense.htm

[Code of Federal Regulations] 

[Title 40, Volume 20] 

see also Mandatory Patent Licenses Under Section 308 of the Clean Air Act Federal 

Register Notice 

see also 42 USC 7608 - Sec. 7608. Mandatory licensing 

TITLE 40--PROTECTION OF ENVIRONMENT CHAPTER I--ENVIRONMENTAL 

PROTECTION AGENCY (CONTINUED) PART 95_MANDATORY PATENT LICENSES 

--Table of Contents 

Sec. 95.1 Definitions. (a) As used in this part, all terms not defined in this section shall 

have the meaning given them by the Act. (b) Act means the Clean Air Act, as amended 

(42 U.S.C. Sec. Sec. 7401-7671). (c) Agency means the Environmental Protection 

Agency. (d) Administrator means the Administrator of the Environmental Protection 

Agency. 

Sec. 95.2 Petition for mandatory license. 

(a) Any party required to comply with sections 111, 112 or 202 of the Act (42 U.S.C. 

7411, 7412 or 7521) may petition to the Administrator for a mandatory patent license 

pursuant to section 308 of the Act (42 U.S.C. 7608), under a patent that the petitioner 

maintains is necessary to enable the petitioner to comply with Sections 111, 112 or 202 

of the Act. 

(b)(1) Each petition shall be signed by the petitioner and shall state the petitioner's 

name and address. If the petitioner is a corporation, the petition shall be signed by an 

authorized officer of the corporation, and the petition shall indicate the state of 

incorporation. Where the petitioner elects to be represented by counsel, a signed notice 

to that effect shall be included with the petition at the time of filing. 

(2) Each petition shall include a copy of the patent under which a mandatory patent 

license is sought. The petition shall identify all current owners of the patent and shall 

include a copy of all assignment documents relevant to the patent that are available 

from the United States Patent and Trademark Office. 

(3) Each petition must identify any person whose interest the petitioner believes may be 

affected by the grant of the license to which the petition is directed. 

(4) Each petition must contain a concise statement of all of the essential facts upon 

which it is based. No particular form of statement is required. Each petition shall be 

verified by the petitioner or by the person having the best knowledge of such facts. In 

the case of facts stated on information and belief, the source of such information and 

grounds of belief shall be given. The statement of facts shall include the following: 
(i) An identification of the provisions of the Act and/or regulations thereunder that the 

petitioner maintains petitioner will be able to comply with if the petitioner is granted the 

patent license that is the subject of the petition; 

(ii) An identification of the nature and purpose of the petitioner's intended use of the 

patent license; 

(iii) An explanation of the relationship between the patented technology and the 

activities to which petitioner proposes to apply the patented technology, including an 

estimate of the effect on such activities stemming from the grant or denial of the patent 

license; 

(iv) A summary of facts demonstrating that the patent under which a mandatory patent 

license is sought is being used or is intended for public or commercial use; 

(v) An explanation of why a mandatory patent license is necessary for the petitioner to 

comply with the requirements of sections 111, 112 or 202 of the Act, and why the 

patented technology is not otherwise available; 

(vi) An explanation of why there are no other reasonable alternatives for accomplishing 

compliance with sections 111, 112 or 202 of the Act; 

(vii) An explanation of why the unavailability of a mandatory patent license may result in 

a substantial lessening of competition or a tendency to create a monopoly in any line of 

commerce in any section of the United States; 

(viii) A summary of efforts made by the petitioner to obtain a patent license from the 

owner of the patent, including the terms and conditions of any patent license proposed 

by petitioner to the patent owner; and 

(ix) The terms, if any, on which the owner of the patent has proposed to grant the 

petitioner a patent license. 

(5) Each petition shall include a proposed patent license that states all of the terms and 

conditions that the petitioner proposes for the patent license. 

(6) Petitions shall be addressed to the Assistant Administrator for Air and Radiation, 

Mail Code 6101, U.S. Environmental Protection Agency, Washington, DC 20460. (c) 

Petitions that do not include all of the information required in paragraph (b) of this 

section shall be returned to the petitioner. The petitioner may supplement the petition 

and resubmit the petition. (d) If the Administrator, or the Administrator's designee, finds 

that the criteria in Sec. 95.3 are not met, or otherwise decides to deny the petition, a 

denial of the petition shall be sent to the petitioner, along with an explanation of the 

reasons for the denial. (e) If the Administrator, or the Administrator's designee, finds 

that the criteria in Sec. 95.3 are met and decides to apply to the Attorney General for a 

patent license under section 308 of the Act, notice of such application shall be given to 

the petitioner, along with a copy of the application sent to the Attorney General. 

Sec. 95.3 Findings prior to application to Attorney General. The Administrator, or the 

Administrator's designee, may apply to the Attorney General for a mandatory patent 

license pursuant to section 308 of the Act (42 U.S.C. 7608) either in response to a 

petition under Sec. 95.2 or on the Administrator's or designee's own initiative, only after 

expressly finding that each one of the following mandatory criteria is met: 

(a) The application is for a patent license covering no more than one patent; 
(b) The party to whom the proposed patent license is to be granted has presented the 

Administrator or designee with evidence that such party has made reasonable efforts to 

obtain a patent license from the patent owner with terms similar to the license terms to 

be proposed in the application to the Attorney General; 

(c) The patent under which a patent license is sought in the application to the Attorney 

General is being used or is intended for public or commercial use; 

(d) The mandatory patent license is necessary for a party to comply with the 

requirements of sections 111, 112 or 202 of the Act (42 U.S.C. 7411, 7412 or 7521); 

(e) The patented technology is not otherwise reasonably available, and there are no 

other reasonable alternatives for accomplishing compliance with sections 111, 112 or 

202 of the Act (42 U.S.C. 7411, 7412 or 7521); and 

(f) The unavailability of a mandatory patent license may result in a substantial lessening 

of competition or a tendency to create a monopoly in any line of commerce in any 

section of the United States. 

Sec. 95.4 Limitations on mandatory licenses 

(a) If the Administrator, or the Administrator's designee, decides to apply to the Attorney 

General for a mandatory patent license in accordance with Sec. 95.3, the application 

shall include a proposed patent license with the following limitations: 

(1) The scope and duration of the patent license shall be limited to that necessary to 

permit the proposed licensee to comply with the requirements the Act; 

(2) The patent license shall be nonexclusive; 

(3) The patent license shall be non-assignable, except with that part of the enterprise or 

goodwill that enjoys the license; 

(4) The patent license shall be for use of the licensed technology in the United States 

only; 

(5) The patent license shall extend only to those uses necessary to enable the licensee 

to comply with sections 111, 112 or 202 of the Act (42 U.S.C. 7411, 7412 or 7521); 

(6) The patent license shall provide for termination, subject to adequate protections of 

the legitimate interests of the licensed party, when the circumstances that made the 

compulsory patent license necessary cease to exist and are unlikely to recur; and 

(7) The patent license shall provide for adequate remuneration that takes into account 

the economic value of the license. 

(b) The Administrator, or the Administrator's designee, may decide as appropriate to 

include additional conditions, terms or limitations on the scope of the patent license for 

which application is made to the Attorney General. 
Appendix Seven 

NATO COMMITTEE FOR STANDARDISATION NATO INTELLECTUAL PROPERTY 

RIGHTS POLICY FOR NATO STANDARDS AND NATO DISPOSITIONS RELATED 

TO THE ISSUE OF COPYRIGHTS FOR NATO STANDARDS DOCUMENT CM(2008)0017 Silence Procedure ends: 28 Mar 2008 16:00 

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