Date: March 7, 2010 

To: RFI@nist.gov 

From: Timothy J. Sheehy 

 Vice President, Technology Policy, IBM Governmental Programs 

 Email: sheehy@us.ibm.com 

 ADDITIONAL NAMES TBD 

Re: Standardization feedback for Sub-Committee on Standards 

I. Introduction 

Historically, IBM has joined with the majority of industries that support and espouse the privatesector-led, consensus-based, voluntary standard setting system(s) of the United States. With the 

charter of ANSI and the government's light hand in standard setting activities, current industry 

and government practices have worked more or less satisfactorily to foster innovation and keep 

US companies globally competitive. However, in view of shifting technological and global 

developments, we believe there are situations where a modified path with an increased role for 

government could prove fruitful. Recent experiences have substantiated these beliefs; yet other 

experiences provide insight into what should be avoided by government participation in 

standards. 

First, an understanding of the changing landscape sheds light on why and where government 

should be involved. 

Technology is increasingly infused into the systems and processes that make the world work. No 

one government agency or non-government enterprise is completely responsible for any one of 

these systems or processes, like healthcare, electrical grid, cyber-security, etc. And there is no 

single “system” for each of these, rather there are “systems of systems”. Standards become 

paramount to ensure the interoperability within and among existing and future systems of 

systems. 

Given the impact of technology and its nearly ubiquitous acceptance by institutions and 

governments around the world as providing improved services and quality of life, it is not 

surprising that the “foundation” and “interoperability-enabler” of technology, the standards, have 

come to the attention of governments. Many are making technical, economic and policy 

decisions around standards with an eye toward the global marketplace. 

Accordingly, decisions made today by any government can affect the long-term global 

competitiveness of nations and industry, as well as the critical delivery of goods and services, the 

system of systems, needed for the health and well being of all. 
IBM urges the US Government to learn from recent experiences and engage in more truly open, 

consultative, transparent public-private collaborations with industry in standard setting activi

Further, any action that the US Government takes should consider in advance how it will be 

viewed outside 

ties. 

its borders and have appropriate plans in place to ensure proper articulation of 

uch actions. 

pecifically, we recommend that government: 

 and arbitration efforts to address particular 

dustry gaps and government needs 

te 

ity 

ues 

et and managed so that concerns are resolved in an 

ppropriate, timely and transparent way. 

s 

of 

e process, 

d assuring its mission of 

oordination can be fulfilled, while not being prescriptive. 

. Work within existing standard setting communities whenever possible 

ch as 

nt 

e 

xisting standards setting organizations (SSO) and be allowed to evolve from existing standards. 

. Serve as equal and vendor-neutral participants in existing standard setting activities 

eeded 

m, 

-

s

S

A. Initiate public-private coordination

in

Where there are systems-of-systems and where the interoperability among them is complex, there

may be a need for government to initiate a “meta-organization” that can coordinate and arbitra

across the multiple standard setting organizations (SSO) that will need to be involved. To be 

successful though, any such meta-organization or government led standard coordination activ

must have governance procedures that are clearly written, fair and fully-transparent. Voting, 

governance, membership, IP rights, legal protection and development processes are serious iss

that need to be clearly stated from the ons

a

For example, in the smart grid space, NIST's establishment of the public-private consortium 

Smart Grid Interoperability Panel (SGIP) effectively addressed coordination issues between SSO

in the area of smart grid interoperability standards. One of the key successful characteristics 

the SGIP is its transparent private-sector governance via a cross-sector governing board and 

member representation, which helps to assure participation and acceptance (“buy-in”) by the 

private sector. This type of public-private partnership enables NIST to participate in th

providing input regarding national goals and requirements an

c

B

As mentioned in the Smart Grid example above, establishing a government coordinator su

George Arnold, as National Coordinator for Smart Grid Interoperability, is a good use of 

government expenditure and involvement in the standards process. Government involveme

should not be in developing the details, but in identifying direction, useable standards and 

architectures where cross-sectoral standards solutions are required and acceleration is important. 

The government should not, on the other hand, create ad-hoc standards groups. For example, th

NIST cloud standards groups should not be managed directly by NIST but rather be seeded in 

e

C

The government has facilitated valuable technical collaboration and expertise where it is n

without the encumbrances that come with garnering vendor supplied talent. Government 

participation can bring technical expertise that is not attached to any particular vendor, platfor

approach or technology. For example, in Integrating the Healthcare Enterprise (IHE), NIST 

involvement has helped to avoid and resolve conflict and improve the standard. However, in

some security related standards activities, the government's role has been detrimentally less
collaborative and less-neutral. Government participation should count as one vote among 

contributors. It's in an environment of equals where true standardization thrives. Care is also 

needed to ensure the government's role is appropriately perceived as not one of control, especially 

by those outside the US, but as an active member of an industry-led standard setting organization. 

 and activities to advance implementation of standards and greater 

teroperability 

al. 

 solve a need felt by the global healthcare community, and has 

olved its own needs as well. 

 and promote the US government policy on standard setting activities 

nd standard usage 

ts 

 in these SSOs rather than have government-run, country specific 

blishing 

e 

y, industry-led standards. This would be a big boost to 

novation and competitiveness. 

he above recommendations are further illustrated in case studies found below in section III. 

 

D. Invest in tools

in

The following examples demonstrate successful investments: I.) The Veterans Administration

(VA) invested in the creation of a software tool for use by implementers of the CDA (Clinical 

Document Architecture) standard. This tool was created in a transparent process managed by an 

organization that consists of government and private sector members both US and internation

II.) The Social Security Administration (SSA) funded the development of an interoperability 

profile within the IHE standards profiling organization. Instead of adopting a solution that was

geared only for SSA needs, by involving an independent and international standards profiling 

organization SSA has helped to

s

E. Clearly articulate

a

SGIP and other entities are using the term “SSO” to include formal standards groups and less 

formal forums and consortia. Some of the major standards efforts relating to the internet have 

been developed by forums and consortia, such as W3C, OASIS, and Open Group, which follow 

sound standards practices and often provide progressive approaches to IP issues. IBM supports 

the recognition by governments of such consortia and forums. We encourage other governmen

to recognize and participate

standardization activities. 

Accordingly, a review of OMB Circular A119 may be appropriate to properly recognize vital 

consortia and forums and qualify them as “open, voluntary standards.” Furthermore, esta

a procurement policy that calls for interoperability based on open standards for software 

interoperability, similar to the European Union EIF paper1

, would help the US to remain th

leader in advancing open, voluntar

in

T

1

http://ec.europa.eu/isa/strategy/index_en.htm 
II. Standard Setting Activities and Value of Participation 

IBM is pleased to be active in numerous industry-led, collaborative, open and transparent, 

standard-setting processes where governments can and do participate. 

We work with industry partners, academics, individual entrepreneurs and governments to develop 

open standards and conduct interoperability testing. For decades, we have been participating in 

hundreds of standards bodies and working groups from the Automotive Industry Action Group 

(AIAG) and Association for Cooperative Operations and Research and Development (ACORD) 

to the Organization for the Advancement of Structured Information Standards (OASIS), the Open 

Group (TOG) and the World Wide Web Consortium (W3C). IBM has also helped to establish the 

Open SOA community, GridWise Alliance and the Health Level 7 (HL7) standard setting 

organization. In addition, IBM is a founding member of the Open Group Trusted Technology 

Forum (OTTF) which provides an open environment for vendor and government members to 

provide best practices to identify trusted providers and products in a global supply chain. 

These organizations – and other formal, and less-formal, collaborations – produce open standards 

for software interoperability2

 that represent the best thinking of many creative minds and that are 

truly global in scope. 

IBM gains value from its participation and determines its involvement based on this value. 

We recognize that in today's globalized economy, products can be made anywhere, work can take 

place where the best skills are located, and ideas can move instantly around the world via the 

network. Increasingly, competitive advantages lie in ideas. Globalization is forcing companies 

who want to stay at the head of the pack to innovate in how they do business at every level of the 

enterprise. Collaboration is now required to tackle some of the biggest problems – single 

companies simply cannot afford to solve them alone. 

This holds true for standards setting – we must work collaboratively to succeed. For example, in 

software where everyone benefits from commonality, open standards help avoid duplicative R&D 

– which the government and other customers fund – and the possible cost of compliance with 

multiple formats. This leads to investment in more substantive innovation. 

Further, our customers in IT and other industries, governments included, live in heterogeneous 

environments. They want interoperability and solutions that connect with their partners and 

customers. Accordingly, most major companies and many governments are making procurement 

decisions with explicit requirements that the ICT goods and services from a variety of vendors 

 

2

 IBM defines open standards as specifications that are well-documented through publication and have 

been accepted by either formal standards bodies or, increasingly, through a collaborative process involving 

interested players. Once published, these specifications are available for implementation without 

restriction. Moreover, interested parties can license or otherwise obtain authorization under a patent from 

standards body members that is needed to implement the standard or, at least, interested parties are made 

aware of such necessary patents. The acid test for an open standard is whether or not it actually permits 

substitutability and choice among independent, multi-vendor implementations on different technology 

platforms with acceptable levels of functionality. Diversity of competing applications that support the 

standard also indicates its openness and ensures choice for procurers and longevity for users. For example, 

open standards for software, like HTTP, HTML, TCP/IP, XML, ODF, SQL and UNIX, are evolved 

collaboratively in a well defined, open and transparent process under the auspices of standard bodies, 

generally not-for-profit organizations such as W3C, OASIS, TOG and IETF. 
work together. They do not wish to be locked into a specific vendor and subjected to the 

priorities and schedules of that vendor. 

In short, IBM invests our people and time in the development of open standards because they are 

the keys to meeting business needs, to fostering innovation and to enabling interoperability in 

heterogeneous environments – the systems of systems in which we all live. We urge government 

to consider the examples and recommendations below for guidance on where and how they 

should invest their time and resources in standard setting activities. 
III. Federal Government Involvement in Standard Setting Process – IBM 

Case Studies 

IBM shares the following case studies to help guide government policy for the most effective use 

of time and resources. These case studies often suggest government roles that support more than 

one of our recommendations. Further, nearly all the studies demonstrate the need for and the 

value of open standards and the open standard setting approach. When the government, as 

detailed below, supports open participation, transparency, vendor-neutrality, good governance and 

fair licensing practices, all gain from great innovations, cost savings and truly interoperable 

solutions. 

A. Public-Private Coordination and Arbitration 

1. Good governance and government neutrality yields effective harmonization across 

multiple SSO effort – NIST SGIP case study

In fulfilling its mission to coordinate the development of smart grid interoperability standards, 

NIST has helped establish the SGIP, a significant public-private partnership that currently has 

over 600 member organizations and almost 2000 participating individuals. NIST defined 22 

stakeholder categories within the structure of the SGIP, and established a governing board with 

representatives for each of those stakeholder categories. In addition, to assure that an 

organization of this complexity could ramp up and become effective in short order, NIST 

contracted an administrator to provide logistical and administrative oversight. 

There are several key characteristics that NIST has addressed in forming the SGIP, which 

represents a model that should be repeatable for other domains of public-private partnership 

standards collaboration: 

1. The involvement of a broad community of stake-holders in the governance of the activity 

to assure participation in the process and acceptance of the results. 

2. The need for a transparent and inclusive process. 

3. The need for a living process that continues to improve. 

One of the primary benefits of the SGIP is that it is not affiliated with any single organization or 

stakeholder community – it provides a venue that can be used to address technical and nontechnical collaboration and harmonization issues across multiple SSOs. It can also quickly define 

requirements and even create initial draft documents that can help speed initiation and 

development of new standards where needed. 

Finally, by creating certain permanent committees and working groups within the SGIP (e.g., the 

Architecture Committee and the Cyber-Security Working Group to name two), and by defining a 

process life-cycle that includes these permanent groups, there is a level of formal review and 

feedback in the internal SGIP processes that help assure technical consistency and quality in what 

the organization provides to the SSOs it is working with. 

Much of what has been created in the SGIP's process life-cycles, and in its general structure, is 

easily applied to other areas of standardization. For example, the Priority Action Plan (PAP) 

process has been effective in several instances in rapidly addressing tactical issues of 

harmonization or coordination across multiple SSOs. Also, the concept of a Catalog of 

Standards, which is still under development, is likely to be another effective mechanism that can 

be carried to other domains. 
The SGIP is just over one year old, and is still rapidly evolving and maturing, but it has already 

had a positive impact in the smart grid interoperability standards space. The investment by NIST 

in creating and supporting the SGIP has been valuable, and it is important to identify a sustainable 

model to ensure the SGIP continues to be effective. Over time this may need to evolve into a 

shared public-private investment, but it will probably always benefit from having some level of 

investment from the government through NIST. 

2. Good coordination and governance enable standards selection for use cases – HITSP case 

study

As a federally sponsored organization, Healthcare Information Technology Standards (HITSP) 

was very effective at getting communities of interest together to look at the challenges of 

healthcare use cases and build implementation guides to enable the use case of interest. This 

community building capability of HITSP was enabled by an open, transparent, well documented 

process. We support the HITSP model of governance as an effective method for building 

communities of interest and enabling standards selection for use cases of interest. 

Where HITSP became less effective was in two aspects: a) excessive, needlessly complicated 

documentation b) too much breadth in too short a time. Unfortunately, these problems resulted in 

a lot of documentation only a small portion of which was truly useful. We encourage the creation 

of focused groups that allow enough time to understand the use case at significant depth and 

creation of a standards based solution with a full understanding of the tradeoffs and values. 

3. Ensure governance models are open, transparent and fair – Direct Project case study

The Direct Project was an innovative approach to standards setting but was significantly 

challenged by the lack of written governance. The Direct Project is an initiative of the Office of 

the National Coordinator (ONC) to solve a specific healthcare interoperability problem. 

Although a sense of governance existed, especially in the minds of the leaders, since there was no 

written governance it was often unclear how or when decisions would be made. Because of this 

the leadership has a unfair advantage, as they are the final arbitrators and frequent modifiers of 

the unwritten governance. Decision making was chaotic, sometimes being forced too early, then 

delayed, then forced again in an extremely short time frame, e.g. 3 working day turnaround of 

significant, direction setting proposals. 

 

The Direct Project also created a new aspect to standards setting process, and that is the request 

for a Statement of Commitment. Early on these statements required a commitment to implement 

with no financial compensation. In a market based environment this type of commitment is 

inappropriate at best, and at worst encourages distortion and misrepresentation by vendors who 

feel pressure to make commitments that potentially could be contrary to market pressures. With 

experience the requirement of commitments became more reasonable in nature, but are still 

unnecessary and a cause of concern for companies like IBM. IBM takes its public commitments 

very seriously and it is a matter of integrity that commitments are made with care, are deliberate 

and are something IBM can definitely stand behind. Asking for a commitment on a relatively 

vague project, where the commitment being made is necessarily vague given the necessarily 

vague project description is a very uncomfortable situation for a company of integrity like IBM. 

This environment encourages participants to say what needs to be said without any consequences 

for failure to follow through on the commitment statement. 

Whenever possible government agencies should work within existing standards and open source 

communities where established and stable governance exists. When creating new, federally 

funded entities for standards selection and harmonization it is critical to have written governance 
and processes and to take any questions of voting, governance, membership and process very 

seriously so questions are resolved in an appropriate, timely and transparent way. Models for 

good governance can be found within existing standards and open source communities. 

Furthermore, we request that participation within federally funded standards selecting entities be 

open and transparent and not include the requirement for a statement of commitment unless an 

RFP or similar process makes the commitment specific and verifiable. 

B. Work Within Existing, Transparent and Open Communities 

1. Use existing organizations to create profiles – CDC case study

The Centers for Disease Control and Prevention (CDC) is becoming a more significant voice in 

standards and standards development. Initially they contracted with private organizations to 

address their public health use cases in standards organizations. This resulted in limited focus 

and adoption. 

Their more recent approach has been to engage and sponsor existing public health member 

organizations as well as creation of open membership Public Health Information Network 

Communities of Practice for creating a ground up approach to public health members defining 

their needs and driving use cases. Engaging with HL7 and IHE to create profiles is still often the 

work of contract hired experts but the new approach ensures the community wants and supports 

the resulting profiles and will increase adoption. 

However, Public health agencies, like the CDC, have created profiles outside these standard 

organizations, such as the Association of Public Health Laboratories, and we would encourage 

that work to be re-directed to organizations like HL7 and IHE for the standards expertise and 

review these organizations provide. Further, we recommend that the CDC continues its work 

with open communities and increase engagement with existing standards efforts. 

2. Lock-in Limits Innovation – FHA CONNECT case study

The Federal Health Architecture (FHA) is a federally funded and mandated organization designed 

to provide federal partners with a platform to communicate through the Nationwide Health 

Information Network program. FHA contracted with Harris Corp. to develop the FHA 

CONNECT platform which is used by federal health agencies as well as available as open source 

code for private purposes. Our concerns with the approach taken with the development of FHA 

CONNECT are that this work was not done within the auspices of a transparent and established 

open community. As a result, the platform is built on a vendor specific application environment 

and creates an inappropriate advantage to the vendor chosen as the application environment. This 

advantage translates to federal agency contracts which require a particular vendor platform as 

well as private use of FHA CONNECT, all of which depends on a single vendor platform. This 

leads to additional costs and less choice for government. Further, this locks the government into 

this vendor-specific solution and could inhibit innovation in this space and adaptability to future 

technologies. 

We urge future federal support of open standards and an open, transparent development 

environment to ensure any resulting application be vendor neutral to encourage fair competition 

in the Health IT marketplace. 

3. Share requirements early to enhance adoption – NIST 800-137 case study

NIST should provide more transparency into their standards development process. This includes 

transparency into the standards decision making process. In many cases, industry has no 
visibility into the decisions that led to a NIST specification. For example, industry relies heavily 

on NIST 800 series but has very little input into their structure. Further, the US Government 

dictates the direction of crypto algorithms and practices. The introduction of NIST 800-137 

caught the industry by surprise and would have been more rapidly adopted had a more effective 

mechanism for sharing been established. IBM recognizes the need for government to take some 

leadership on key security standards but urges US Government and NIST to foster early 

collaboration and consistent sharing to facilitate greater industry adoption. 

C. Government Investment 

1. Investment in tooling fosters adoption of HL7 CDA – VA case study

The VA participated in an open and international healthcare standards development organization 

(HL7), contributing to the development of an open standard for clinical documents (CDA). To 

foster adoption and simplify use of the standard, the VA invested in the creation of a software tool 

for use by implementers of the standard. The VA approach to this investment was to create an 

open source project, using a transparent process managed by an organization, Open Health Tools, 

that consists of government and private sector members both US and international. The VA 

provided project management and developers for the project, as did private industry. The 

licensing model selected for the project was one proven to be effective for industry – Eclipse 

Public License (EPL). VA rightly insisted on the use of open infrastructure standards in the 

development of the software tool (UML - Unified Modeling Language from Object Management 

Group-OMG), open standards implemented by many vendors. VA tested the software developed 

in the project with several vendor products and open source projects that support UML, to make 

sure the resulting software was not proprietary, not giving any one vendor an advantage. 

While the VA Open Health Tools project is an excellent model for federal standards involvement 

we have noticed that there is a lack of knowledge and understanding of this project across the VA. 

Without agency wide recognition and adoption these projects risk having little impact on the 

areas they are designed to solve. We encourage the Office of the National Coordinator to ensure 

that where involvement in standards development is adopted that work be more visible across the 

federal agencies. 

2. Investment in interoperability profiles solved a global healthcare need – SSA case study

The SSA had a real and pressing need for access to information about healthcare providers. As 

part of an IBM contract, SSA funded the development of an interoperability profile within the 

IHE standards profiling organization. This support by a federal agency for a critical piece of 

standards work is an excellent example of influence by a federal agency. Instead of adopting a 

solution that was geared only for SSA needs, by involving an independent and international 

standards profiling organization SSA has helped to solve a need felt by the global healthcare 

community, and has solved its own needs as well. 

D. Serve As Equal and Vendor-Neutral Participants in Existing Standard Setting Activities 

1. Neutrality to contribute where needed – IHE case study

Integrating the Healthcare Enterprise (IHE) is a standards profiling organization consisting of 

primarily voluntary contributions from many sources. NIST has contributed significantly to IHE 

in providing technical standards expertise and testing capabilities. A key advantage to NIST 

involvement demonstrated by its work in IHE is the neutrality that a non-vendor organization can 

bring. Rather than being attached to any particular platform, approach or technology, NIST has 
demonstrated an ability to be neutral in that respect and supply technical expertise where it is 

needed without the encumbrances that come with vendor supplied talent. In particular, NIST has 

developed an independent suite of testing vehicles that are extremely useful in verifying 

interoperable communication. 

2. Technical-neutrality eases industry adoption – NIST 800-57 case study

The NIST 800-57 recommendation provides general guidance and best practices for the 

management of cryptographic keying material. Overall, this publication has proved to be quite 

useful to various projects and teams within IBM. We've used the publication to help guide what 

algorithms we concentrate efforts to support, what types of key management solutions we will 

deliver, and also to have a background from which to present our solutions to customers. The 

document is impartial to different technologies and vendors, and provides the industry a basis to 

work from in providing value-added solutions. 

3. Ensure the development and management of specifications are open, transparent and 

fair – SCAP case study

Security Content Automation Protocol (SCAP) is a synthesis of interoperable specifications that 

report and enforce security and configuration against a policy definition. SCAP was developed 

by MITRE, adopted by NIST and funded and supported by NSA. 

IBM believes development and control of SCAP has not taken place in an open, transparent and 

inclusive process. A core technology specification such as this should have vendors as key core 

members to facilitate collaboration and adoption. In addition, with MITRE owning the IP rights, 

management of the specification is not inclusive and results in an unreasonable rate and pace of 

change. As a result, vendor collaboration is limited and consensus on the structure and 

implementation of SCAP is affected. 

Another consequence of the process followed is an increase in complexity of the SCAP languages 

(XCCDF, OVAL, OCIL, CPE, etc) which has affected its usage (it's not adopted outside of the US 

Government). As an example, a recent specification that was received from the government took 

several iterations with NIST before passing XML validation. 

In short, development of innovative technology thrives in open, inclusive and transparent 

environments, and IBM would not only like to ensure future standards-like development be done 

within formal standards bodies, but as the government seeks to formalize SCAP, IBM urges the 

government to consider a formal standards body such as the Distributed Management Task Force 

(DMTF) , which clearly focuses on systems management standards. 
IV. Standard Setting Issues – IPR and Foreign Regulations 

A. With respect to intellectual property, what approaches have you experienced or found 

most appropriate for handling patents and/or other types of intellectual property rights that 

are necessary to implement a standard? 

1. Smart Grid

The SGIP has formed an IPR working group which is tasked with addressing potential IP issues 

relating to these standards. IBM supports this effort which is aimed at anticipating issues that 

might impact standards involved in this public-private collaboration. Providing a catalog of 

standards (COS) with inquiries to be answered for each standard considered for Smart Grid (or 

other government-supported standards constellations) can help avoid IP issues later. 

2. Royalty-Free Licensing and Nonasserts

In some technologies, such as software-to-software interoperability in the world wide web, SSO 

participants have agreed to forego royalties so that external interfaces [between different 

companies products] are available.3

 IBM (and others) have published various patent pledges and 

nonasserts in specified fields to facilitate standards implementation.4

 In addition, standards 

specifications should be managed by impartial 3rd parties and freely available for public 

consumption. The decision to follow an Royalty-Free (RF) model must take into account various

factors, including patent holder concerns. Various stakeholder interests must be assessed in 

considering an RF model. 

3. Availability of Injunction for Infringing Necessary Claim Subject to a Licensing 

Assurance

n 

If/when can a patent holder, who has made a license commitment to an SSO, seek an injunction 

or enhanced damages notwithstanding the commitment? This issue is complicated and has arisen 

in several cases recently in the US and in Europe [Contrast “Orange Book” Case in German 

Supreme Court and Philips v Kattenen before the Dutch Court.] Specifically, a patent holder ca

offer a license but an implementer may not accept the terms, the parties disputing whether the 

terms and conditions are “reasonable” and/or “nondiscriminatory” (as SSOs often prescribe in 

their rules or policy). In such instances, the patent holder has an interest in not losing bargaining 

leverage when an implementer refuses a reasonable license. On the other hand, implementers 

have an interest in not being enjoined before any license or a reasonable license has been offered 

– where the implementer has relied on the license assurance.5

 Guidance on this matter (in an 

SSO Policy) would be useful to patent holders, implementers, and users of standards. 

4. Standard as public interest factor in assessing injunction

One factor for a court to consider in awarding an injunction (under the US Supreme Court Case 

of eBay v MercExchange)6

 is “public interest.” An SSO Policy expressing the mutual 

understanding that open standards are a "public interest" consideration in reviewing injunctive 

relief could be helpful.7 Such provisions could also inform courts with respect to injunctive 

 

3

See OASIS IPR Policy http://www.oasis-open.org/who/intellectualproperty.php 

4

For example, see http://www.infoq.com/news/2007/07/ibmpledge 

5

As an analog, in various European countries, a patent holder may agree to forego injunction and agrees to 

grant reasonable licenses in return for certain benefits. The LOR differs from the standards situation, 

however, in that such patent holders voluntarily decide on LOR for each patent and receive other 

benefits. 6

547 U.S. 388 (2006) 

7

We are not aware of any SSO including such a provision at this time. 
proceedings concerning standards whose policies do not feature such a provision. 

B. 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? 

1. ATSC

A digital TV standard (ATSC) was strongly supported by the Federal Communications 

Commission. After the ATSC standard was approved, several patent holders sought royalties 

alleged by some implementers to exceed RAND. A petition was submitted with the Federal Trade

Commission, asking what the role of government is in helping ensure access to standards 

mandated, supported, or promoted by an agency. Opponents of the petition argue that the 

licensing of necessary patents is between patent holder and prospective licensee, and government 

should not intervene. Given the importance of standards in the five identified fields, this topic is

timely. Some of the measures outlined below in Section D may be helpful. 

n 

C. Are there particular obstacles that either prevent intellectual property owners from 

obtaining reasonable returns or cause intellectual property owners to make IP available o

terms resulting in unreasonable returns when their IP is included in the standard? 

1. Ownership of inventions made with government funds

To encourage innovator participation in developing technology, especially for cross-sectoral 

standards involving multiple agencies, it would be helpful to provide clear and uniform 

procedures by which developers can take ownership to government-funded inventions (under 

Bayh-Dole or similar provisions). In Smart Grid, Federal Energy Regulatory Commission 

(FERC) may provide funds to develop standardized technology. Simple guidelines for private

partners to avoid loss of rights would also be helpful.

ent-funded inventions. 

8

 An automatic waiver of government 

ownership rights, where the contractor is subject to a RAND commitment to license necessary 

patent claims to others, might be helpful with regard to standards incorporated into the five 

identified fields. This RAND commitment should apply to entities operating government 

laboratories or facilities, entities funded under research or development contracts, and entities 

otherwise receiving exclusive rights under governm

2. Scope of RF licenses to government and contractors for government-funded inventions

Under federal regulations, contractors can take title to “subject inventions”, but such ownership is 

conditioned on an RF license to the government and those acting on its behalf for governmental 

purposes. To provide certainty to government-funded developers who may seek royalties for 

inventions they develop (and may partially fund) in the context of standards in the five fields, i

would be helpful to specify when RF license rights apply. Whether or when “implementers and 

users” are engaged in a government purpose (entitled to RF licensing under federal regulations) 

can affect the interests of technology developers who acquire patents. For example, suppose the 

government funds a contractor’s patented invention claiming an interface for accessing a 

government healthcare database according to a standard. Would an individual not employed by 

the government use the interface royalty-free? Would the individual’s use be for governmental 

purposes? Or would the contractor be allowed to seek a RAND royalty, as the IP Policy for the 

standard would otherwise allow? It is appreciated that the “governmental purposes” definition

t 

 is 

context dependent – certainty would be especially helpful in the key standards areas. 

 

8

http://wraltechwire.com/business/tech_wire/opinion/story/2338358/ 
3. Government employee inventions

loyees or that are otherwise owned by the government, 

. Access to copy government-supported standards documents

Patent claims made by government emp

and that are necessary to implement a government-supported standard, should be licensed 

royalty-free and under other terms and conditions that are reasonable and nondiscriminatory. The 

government interest in commercializing its employees developments and providing exclusive 

rights under government-made patents to achieve that goal, should be of lesser concern when a

patent is needed for a standard. Alternatively, if RF is not adopted, measures should be taken to 

preclude government-employee inventions from being asserted to enjoin implementation of a 

standard in any of the five fields.9

4

ards specification documents 

ent 

gh law or regulation the use of the standard 

upport for the standard 

tements 

. What strategies have been effective in mitigating risks, if any, associated with hold-up or 

ACKGROUND: Patent holdup can arise when a non-participant holds a necessary patent 

s, or 

one 

 

It is recognized that some SSOs rely on the sale of copyrighted stand

to sustain operation. The government may consider funding an SSO so that it could provide 

copies of the specification at no charge without jeopardizing its finances. Factors the governm

might consider in determining whether to subsidize free copies of the specification include 

whether the government: 

 

• requires throu

• provides funding for development of the standard 

• is a member (including manager) of the SSO 

• provides requirements for the standard 

• provides researchers or other technical s

• relates procurement decisions to the standard and/or 

• encourages use of the standard through public sta

D

buyers' cartels?10 

B

claim(s) or when a standards body (SSO) participant, pursuant to SSO Policy, opts out, revise

revokes a licensing commitment. If such necessary patents are asserted after a standard has been 

included in implementer products and has been widely adopted by the industry, the standard can 

be disrupted. Numerous SSOs are adopting measures to address third party patent 

circumstances11 and to limit effects of participant assertions of necessary claims. The challenge

in addressing patent holdup is in balancing party interests – recognizing the value of having 

innovators invest in and contribute technology to the standard effort, and recognizing the 

importance of implementers having reasonable access to necessary patented technology. SSOs, 

for their part, have one interest in standards not being discontinued merely because a patent 

claim is identified - - where a claim may not be “necessary” or may have enforcement issues 

(such as ownership, validity, implied license, or other issues and have another interest in not 

spending time and resources as a referee of legal disputes. It is often noted that there is no “

size fits all” policy to cover all standards (where different technologies and stakeholder interests 

9

While we are not aware of the government asserting patents in a standards context, a statement to this 

effect with regard to the five identified fields might be helpful. 10This section mainly covers potential “holdup” by SSO participants. Third party holdup may be difficult 

to address by SSOs. One approach involves patent pools which can involve benefits and risks to patent 

holders. 11http://www.ecma-international.org/memento/codeofconduct.htm 
apply), however IBM believes the following practices would be beneficial to the public-private 

efforts in standards involving the five identified fields. 

1. Disclosure and license assurances

of a government-supported standard should promptly 

. Early opt-out

Those participating in the development 

disclose patents with claims they believe are necessary to implement such standard. Participants 

should also state whether they will offer RAND licenses for such claims.12 It would also be 

helpful for patent, licensing, and policy information to be readily accessible by the public. 

Moreover, IP disputes and issues of which the SSO is aware, that arise during and after standards 

development, should be posted [on the SSO website, for example] for access by standards 

developers and prospective implementers. Such transparency can provide useful information 

before parties become locked into a standard. 

2

 participant in the standard development to opt out (or not agree to license) 

. Licensing commitment applies to employer and corporate family

If an SSO allows a

necessary claims on a RAND basis, the opt-out should be made within a set period during the 

standards development. For example, within a fixed time after inclusion of the invention in a 

portion of a distributed draft specification. If that portion is included in an approved standard, the 

opt-out would apply.13 This allows the SSO to consider and/or design around the identified 

patent. While SSOs typically do not require members to conduct patent searches, it seems fair to

require identification by an SSO participant before excluding a patent from an SSO's general 

RAND license commitment. For government supported standards, an identification of SSO 

Policy provisions addressing this point would be helpful. 

3

ployed, the employer 

s 

an 

. Transfers of patents that include necessary claims

Some SSOs allow individuals to join as members. If the individual is em

generally owns patent rights and the individual's commitment may be hollow. The individual 

might direct the standard to technology that is patented, but is not subject to a license 

commitment from its employer. Employees should state early on that they represent and bind 

their employers. Similarly, there may be a concern that one corporate family member owns 

necessary patents, while another corporate family member (parent, subsidiary or affiliate) make

license commitments applicable only to itself. Committing employers and corporate families c

avoid later patent issues.

4

y patent claims are bound by prior 

. Patents transferred in bankruptcy

Many SSOs are addressing if/how transferees of necessar

patent holder commitments to an SSO. A number of instances have arisen in this context in the 

US and Europe.14 A number of instances have occurred in which the transferee of a patent 

containing necessary patent claims has raised questions concerning prior owner licensing 

assurances. Certainty on this issue would be helpful. 

5

ted patents are transferred in a bankruptcy sale, an IP 

Policy should include a provision that 11 USCode 365(n) shall apply to commitments and 

 

To help address situations where commit

12Some SSOs only require disclosure of patent while others provide only that participants commit to license 

RAND. While standards developed under such policies may be considered for incorporation, greater 

transparency may be beneficial in avoiding future IP issues. Where a participant commits to licensing 

royalty free under RAND terms and conditions, the need for disclosing patents is substantially reduced. 13If the portion is not included in the final specification, the claim would not be a necessary claim. 

14For example, FTC Matter regarding N-Data. In Europe, IPCOM (Bosch). 
licenses made by a (prior) patent holder15 regardless of country of bankruptcy. Section 365(n) 

protects licensee interests. 

6. Licensing commitment subject to reciprocity and/or defensive suspension

hile licensing commitments must have certainty so that implementers can plan products, the 

 withholding 

raws

W

commitment ought to be conditioned on the licensee reciprocating. Suspending or

the commitment/license should reflect reasonable stakeholder interests. For example, the 

withholding of a license (and the availability of injunction and other remedies) may be affected 

by various factors, such as whether the patent holder first asserted an infringement claim against

the implementer or whether the patent holder communicated a license offer to the implementer 

before the implementer brought its action or whether the implementer had a period during which 

to drop its action before the suspension or withholding of license rights took effect. 

7. Licensing commitments made should continue after participant withd

ased on a “snapshot” of the latest specification received by the participant from the SSO, the 

sary patent 

t 

ntribution

B

participant commitment should continue with respect to all current and future neces

claims of the participant. In this way, patent holders do not commit to specifications they do no

work on but commit to those they did participate in. Implementers can rely on commitments 

made prior to participant withdrawal. 

8. Patent value based on invention co

he royalty base and royalty rate should reflect the economic value of what the inventor actually 

t feasible, the royalty should consider the 

T

contributed to the art (or the standard). To the exten

availability of alternatives during the standard's development. 

9. Incorporation by reference

If technology or standards needed to implement the subject standard are incorporated by 

plementers are to access “necessary” patents from those 

in standards

reference, provisions as to how im

sources can help avoid future problems.

10. Copyrighted materials 

or standards involving software, code may be included in the specification. The SSO should 

ters to use copyrighted material in the standards and 

1. Limiting participant remedies over time

F

have rights necessary to authorize implemen

in reference implementations (e.g. working embodiments contributed to the SSO). SSO 

copyrights are necessary to ensure against unauthorized derivatives works that can fork a 

standard. 

1

s after a technology is widely adopted and 

older 

 

Late disclosure and assertion of necessary patent

“locked in” by the industry can provide standardization benefits and leverage to the patent h

beyond the value of the invention itself. To promote prompt disclosure by participants, the 

availability of remedies may be tied to disclosure timing. Availability of attorneys fees, costs, 

enhanced damages, and injunction may depend on when a necessary claim is disclosed by a 

participant. For example, if a participant's claim is identified before a standard is approved, all 

remedies are available. However, a year after a standard is finally approved, enhanced damages 

may be unavailable and three years after approval, injunction may not be available.16

15But see In re Qimonda AG Bankr. Litig., 433 B.R. 547; 2010 US Dist. LEXIS 66926 (EDVa 2010) for 

issues that may arise if the main insolvency proceeding is outside the US. 16We are not aware of any SSO including such a provision – which would be controversial. 
E. Foreign regulations role in standards adoption and use 

1. The European Interoperability Framework (EIF)

 standards. The EU in the EIF 

d 

o 

ply to 

ents 

. China

EIF reflects the influence of government procurement on

recognizes the importance of open standards and competition in government networks an

software products. The EIF has recognized the importance of access to data (such as to 

documents) in the future. Goals of EIF include ensuring communication from business t

government, citizen to government, and interagency. The goals inform the standards that ap

government-used standards. EIF version 1 expressed a preference for royalty-free "open 

standards" while EIF version 2 discusses availability of both proprietary and open source 

solutions in "open standards" that are favored for procurement. State and federal governm

should consider the importance of ensuring that open source software products can be 

implemented in developed open standards. 

2

nnounced a procurement preference for “indigenous innovation” technology. Five 

ove 

hina has also sought to discount royalties for patents necessary to implement standards to levels 

oting 

China has a

years ago, China sought to promulgate a “homegrown” wireless WAPI standard (in place of an 

international standard) that would largely exclude non-Chinese developers and manufacturers. 

Such preferences have been opposed on various fronts. The same is true for China's Multi-level

Protection Scheme (MLPS) mandate that deems what products, systems and information security

the end-user must put in place based on what type of information is being handled. MLPS 

requires that core information security technology must be Chinese-made for Level 3 and ab

systems. US IP Policy should continue to promote global openness. 

C

below a reasonable rate. Specifically, China’s Standardization Administration of China (SAC) 

proposed regulations promoting compulsory licensing (for national standards) and licensing 

royalty free or at rates below normal commercial rates. These regulations have been shelved

following considerable comment. This experience underscores that SSO IP Policies and the 

licensing terms applicable to necessary patents should reflect a proper balance between prom

innovation in the standard's field and innovator participation in standard development on the one 

hand, and making government-supported standards reasonably available to interested 

implementers and users (including the government) on the other. 
V. Conclusion 

IBM believes there are roles for government in the development of standards, and based on the 

given needs of an industry or for cross-sectoral collaboration, government can contribute and in 

turn support the national economy as well as the global competitiveness of US industry. 

Government acting as convenor for Smart Grid solves a leadership gap to enable the growth of 

this sector by bringing together manufacturers, consumers, energy providers and regulators to 

develop interoperable standards. Government participating in SSOs as an equal contributor along 

side industry can not only move standards forward with requirements and comments, but can also 

help keep government informed, which in turn can drive national and global policy. Government 

also investing resources in the open development of tools to further standards can help by sharing 

across industry as well as government agencies. In addition, where government can provide a 

framework to promote clarity and predictability of IPR in standards, this can enable effective 

participation and adoption of standards. 

IBM believes that cooperation between the public and private sectors is increasingly important to 

the development of standards and would welcome the opportunity to provide additional 

information as needed.