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The IEEE-SA is tackling thorny standard-patent issues

Posted by Karen B on July 23rd, 2014

One of the most – if not *the* most – contentious and complicated aspects of standardization is when patents are involved. The courts are full of cases that involve Standard-Essential Patents, which are patents that will necessarily be infringed upon when a standard is implemented.

In October 2012, the United States Department of Justice set out “Six ‘Small’ Proposals for SSOs Before Lunch” as part of an international roundtable discussion in Geneva. The DoJ asked for Standards-Setting Organizations to try to help prevent unnecessary and inappropriate lawsuits from clogging the judicial system. The Deputy General of Competition within the European Union has expressed similar concerns.

An important, related activity is underway. The IEEE Standards Association is updating its patent policy with the goal of ensuring an appropriate balance between the interests of technology developers, standards implementers, and consumers.

Since the last update of IEEE-SA’s patent policy, which was implemented in 2007, there has been worldwide attention from judicial and regulatory bodies in three major areas as they relate to standards:

- how rights to use technology (patents) are transferred

- what are “reasonable” patent licensing terms

- when is it appropriate to issue injunctions

The IEEE-SA is well-positioned to tackle these thorny issues for at least three reasons. It was the first standards-setting/developing organization to sign a Memorandum of Understanding with a patent office (the European Patent Office in 2010) to improve the quality of standards-related patents and to reduce patent-related uncertainty in the arena of standards.

The IEEE-SA provide a neutral environment in which standards are developed. It is based on five principles for standards development: due process, consensus, transparency, balance, and openness.The IEEE-SA has been asked to provide its opinion on standards and patents in several jurisdictions, including testifying at a U.S. Senate subcommittee hearing on standard-essential patents.

The view of the IEEE-SA is that policies related to standards and patents should be as clear as possible and broadly applicable. Ultimately, this opens the door to increased adoption of standards.

Other standards organizations have been wrestling with the issues related to patents and standards. IMHO, the IEEE-SA has made greater strides and not shied away from tough challenges. They are updated their patent policy through a rigorous process of gathering and addressing public comments. The fourth round has just closed. Updates to the policy will be approved through the IEEE-SA’s governing bodies, its Patent Committee, its Standards Board, and finally it Board of Governors.

If you’d like to see the extensive dialog and the current draft of the updated patent policy, it’s located in the IEEE-SA Patent Policy Dialogue web area.

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2 Responses to “The IEEE-SA is tackling thorny standard-patent issues”

  1. Jerry Gipper says:

    VITA has been breaking new ground in the area of disclosure and licensing of patents in standards, becoming the first standards developer in the world to receive guidance for ‘ex ante’ procedures from any legal authority. The patent policy is included as part of the VSO Policies and Procedures.

    The policy has significant impact in two areas. The first is the change from a voluntary system to a mandatory system of disclosing of essential patents and patent applications. The second area of impact is the Fair, Reasonable, And Non-Discriminatory (FRAND) disclosure of maximum fees or royalties and the most restrictive license terms for licenses to technology essential to implementation of a standard that is in development by a working group. Members to new working groups that form have 60 days to disclose essential patents or patent applications and license terms while members in existing working groups have 30 days.

    The objective of this policy change is to eliminate patent ambush. VSO working groups are expected to make sound technical and business decisions. Patent ambushes can delay or undermine the acceptance of new standards.

    In 2006, the US Department of Justice (DOJ) issued or reviewed these documents related to VITA and VSO activity.
    • DOJ news release from October 30, 2006
    • DOJ business review letter dated October 30, 2006, referenced in the news release
    • Implementation Plan for VITA’s Revised Patent Policy posted December 18, 2006

    In addition to the DOJ, there are other government agencies and other organizations reviewing VITA procedures, approval letters, and other documentation.

    The VITA Board of Directors approved the changes to section 10 of the VSO Policies and Procedures on 21 November 2006.

    On 17 Jan 2007, these changes were voted on and approved by the VSO, and the VITA Board of Directors and VITA attorneys were immediately informed of the results. VITA attorneys subsequently informed ANSI counsel and the ExSC (Executive Standards Council of ANSI), and submitted the required documentation in accordance with ANSI procedures and policies concerning “maintenance of accreditation”.

    On 30 January 2007, a joint FTC/DOJ informational hearing was held, which VITA attorneys attended.

    On 31 May 2007, the ExSC of ANSI announced approval of the new policies and re-accreditation of VITA as an ANSI standards developer, effective as of May 22, 2007.

    The VITA Standards Organization is currently operating under these approved policies and procedures, beginning with the January 2007 VSO meeting immediately after approval.

    VITA continues to lead in the effort to make the development of open architecture standards for computing even more effective. Visit http://www.vita.com/Disclosure to learn more.

  2. Karen B says:

    Thanks, Jerry. This is really good information, and I’ve shared it with the IEEE-SA Patent Committee. I wish VITA much success in the future.

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