Industry standards are important to the public – they protect safety, health, security, and the environment and ensure uniform technical quality and performance, while enabling open development of products meeting the standard. Standards can address such disparate areas as health concerns and product compatibility and are centrally important for international trade.
Standards setting organizations (SSOs) vary widely, in geographic coverage from regional to international, in industry focus from broad industries to specific industries or technologies, and in membership, from open to limited membership.
However, the primary form of an SSO is open (i.e. anyone is allowed to participate in the standards development/standardization process). SSOs meet periodically to advance and agree on standards content and publicly disclose their activities and processes.
Intellectual Property Rights Policies Of Standard Setting Organizations
In order for standards to achieve their full potential, implementers must have reasonable access to and leeway to develop technologies best suited to comply with emerging standards. To facilitate open and rapid development of standards compliant technology, SSOs, as part of membership agreements and policy guidelines, manage the development and use of patented technologies to which implementers can be provided access.
Effective intellectual property rights policies balance the goals of ensuring that end-implementers have reasonable access to essential technologies and providing incentives for innovators to contribute technologies for standardization.
The intellectual property rights policies of open SSOs typically contain two important parts: 1) rules regarding the disclosure/declaration of standard essential patents; and 2) rules regarding the licensing and enforcement of intellectual property related to the standard.
Intellectual property rights policies of SSOs generally require the disclosure of standard essential patents, which contain claims to technologies that are essential to the implementation of a standard, such as a broad claim to a modulation method (e.g. Code-Division Multiple Access or CDMA used in older 3G wireless standards).
The owners of such patents make a commitment to the SSOs to offer licenses to their patents on fair, reasonable, and non-discriminatory (FRAND) terms. Standard-essential patent owners also typically agree to disclose potentially related patents as well and to commit to license them as well.
Those professionals involved in the standards process would do well to consider the relationship between the standards, related intellectual property rights policies, and the objectives of the various groups involved. These groups often have distinct motives and concerns, and therefore, carry out standards development tasks differently.
Consequently, intellectual property rights policies frequently differ in their focus with respect to these different groups and their related motivations. Zeroing in on the objectives of the group at hand and understanding related strategies and paths forward is critical.
The Disclosure Requirement
Some SSOs are more permissive than others with respect to their rules and procedures, inclusive of the disclosure requirement. While one may be relatively lax with their requirements, another may have very specific requirements and require adhering closely to formalities, such as particular forms and specific timelines.
Because each standard evolves in its own way, the professionals who are involved should understand what intellectual property rights should be disclosed, when, to whom, and what procedures should be followed.
Professionals involved in standard setting should also be wary about the knowledge that may be ascribed to organizations based on those professionals’ involvement in the standards process. Patent professionals in particular should also analyze competing or overlapping disclosure requirements as they try to comply with them.
Licensing Terms, Mechanisms For Agreement, & Dispute Resolution
Patent professionals involved in standards setting should understand the interaction of intellectual property rights disclosures and the possible FRAND licenses that may result from them. While FRAND terms should be fair and reasonable, other portions of such licenses may vary widely depending on the intellectual property rights policies involved or because of one or the other of the parties’ actions.
An appreciation of an SSO’s policies will enable those involved to better plot the best licensing path forward. Patent professionals should also understand the procedures in place for particular SSOs for resolving breakdowns in licensing negotiations or disputes arising from either the patent owner or prospective licensee.
For example, a patent owner may refuse to license standard essential intellectual property on FRAND terms, and intellectual property rights policies frequently provide a means to resolve disputes arising from such circumstances.
These means typically vary based on the timing of the development of relevant standards, including whether alternative technologies to proposed standards features exist, the structure of the relevant SSOs (including sub-groups) to deal with these disputes and provide guidance, and whether or not the owner of the standards essential intellectual property is a member of the SSO.
Concluding Thoughts
In order to navigate the standards process in an effective way, those who are involved in standards setting must appreciate the goals and role of the applicable SSO. It is also imperative to understand how to work within the framework of the relevant intellectual property rights policies and to satisfy the applicable requirements.
Contact The Intellectual Property Law Attorneys At METROLEX IP Law Group
Whether you have questions about patents and industry standards, or have other intellectual property needs of any kind, the attorneys at METROLEX IP can provide you with high-quality counseling, advice and work product. Schedule a consultation with our intellectual property attorneys today.
