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.