Giving Process Its Due When An SDO Changes Rules Of The Game 22/01/2017 by Intellectual Property Watch 1 Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) The views expressed in this article are solely those of the authors and are not associated with Intellectual Property Watch. IP-Watch expressly disclaims and refuses any responsibility or liability for the content, style or form of any posts made to this forum, which remain solely the responsibility of their authors. By George T. Willingmyre Introduction and Abstract George Willingmyre The process a Standards Developing Organization (SDO)[i] employs to revise its patent policy is an aspect of the SDO’s competitive posture in the global marketplace. Research and publications about the substance of SDO patent policies are widely available. But a dearth of research exists on the processes SDOs employ to revise their patent policies. Generally, the processes an SDO uses to revise its patent policy are part of the governance processes of the SDO. As a baseline, the governance processes of an SDO must be consistent with the applicable legal system defining what is acceptable and unacceptable behavior. What an SDO says about its governance processes is a further consideration. Thus the procedures themselves, the procedures’ relationship to the applicable legal system and what the SDO says about the procedures all play a role in understanding how an SDO revises its patent policy. SDOs place varying priorities on the role of balance among the SDO’s constituencies and the dependence on consensus decision making in revising their patent policies. The processes of the American National Standards Institute (ANSI); the Institute of Electrical and Electronic Engineers Standards Association (IEEE-SA); the European Telecommunications Standards Institute (ETSI); the Internet Engineering Task Force (IETF); and the combined International Organization for Standardization, International Electrotechnical Commission and the International Telecommunications Union (ISO/IEC/ITU) illustrate this variety of approaches. The process an SDO uses initially to define its patent policy has different implications than the process an SDO employs to revise its patent policy. This is primarily due to the diverse interests that participants have in the legacy standards of the SDO that could be impacted by revisions of the patent policy. Two discriminators — the extent to which an SDO requires or encourages balance among the SDO’s constituencies and the relative importance of consensus decision making — are key to distinguishing among SDO processes for revising their patent policy. Any revision of an SDO’s patent policy has potential to benefit or harm participants and users of the standards. In choosing the priority to place on balance among constituencies in the revision process, SDOs make important decisions based on the diverse interests and numbers of constituents in its standards setting process … and the needs of constituent users of the SDO’s standards. The greater use of “consensus decision making” promotes greater general support for the outcomes of the revision process. Distinction between elements of a patent policy and the process for its revision; Role of patent policy and its revision process as tool of SDO competition The process an SDO uses to revise its patent policy is an aspect of the SDO’s competitive posture in the global marketplace. The process for revising a patent policy makes the SDO more or less attractive to participants creating the SDO’s standards and to implementers using the standards. If the process for revising a patent policy insufficiently responds to the needs of the participants who write the SDO’s standards or to implementers who use the standards, market forces will lead participants and users to competing SDOs whose approaches to the revision of patent policy are more responsive. The elements of a patent policy represent the choice an SDO makes to balance the rights of patent holders and the need for implementers to be able to use proprietary technology that may be essential for compliance with a standard while protecting and advancing the SDO’s own interests. Research and publications about the substance of various patent policies are widely available. Such variations in SDO patent policies are not the focus of this paper. Nor what constitutes a “good” patent policy is the focus of this paper. This paper concentrates on the variety of processes SDOs employ in revising their patent policy and the degree of “balance” among constituencies and “consensus” decision making in that variety of processes. Distinction between developing a new patent policy and the procedures to revise it How an SDO initially defines its procedures has different implications than how an SDO revises its procedures. This truism applies specifically to an initial SDO patent policy and its later revision. Far more important than the substance of the initial procedures are revisions to procedures that must reflect the diverse interests that participants have in the legacy standards of the organization[ii]. In creating its initial procedures an SDO has many options from which to select. Free market competition will determine how well or poorly the SDO has defined its procedures and patent policy. Potential contributors to the process are free to join or not join a new standards setting activity without significant consequence beyond the time and effort spent in creating a standard. However the matter becomes more complex when an SDO that has produced standards using procedures that employ a particular patent policy makes substantive changes to the previous patent policy. The participants that contributed to and implemented the SDO’s legacy standards have important interests that defined their participation. Users of the SDO’s legacy standards have important stakes. Practical details such as the simultaneous existence of legacy standards developed under a previous patent policy and new standards developed under a revised patent policy raise questions that need attention. The implication of new standards that may incorporate by reference legacy standards must also be contemplated because different patent policies apply simultaneously to the new standard. Criteria for SDO governance processes The procedures for revising an SDO’s patent policy are generally found in the “governance processes” of the SDO. An SDO’s patent policy is one element (along with many other criteria) in the development processes for the standards of the SDO. However the governance process including the process to revise the patent policy are usually separate and distinct. Just as ensuring appropriate “balance” among multiple competing interests is important in the setting of an SDO’s standards, appropriate balance among its constituents is an important consideration in the process for SDO revision of its patent policy. SDOs factor in the nature and numbers of its constituents participating in its standards setting process as well as the needs of potential constituent users of the SDO’s standards in both the requirements of a patent policy and the process for revising such requirements. In striking a balance in either instance SDOs confront the reality there will be always be more constituents who will use the standard than there will be constituents who contribute proprietary technology. The SDO’s own interests in promoting widespread use of its standards and attracting participants to the process who are or may become supporting members of the SDO are facets that SDOs also contemplate in both the patent policy and the process for revising it. An SDO operates within its applicable legal system in defining what is acceptable and unacceptable behavior for the participants in its activities. Legal systems differ around the world. But all share the goal of prohibiting anticompetitive behavior and deceptive conduct. The procedures applicable to developing an SDO’s standards as well as its governance procedures must pass muster in this regard. How well the SDO enforces its procedures also has important legal components. Recent presentations by officials from the US Federal Trade Commission (FTC)[iii] and staff of the US Department of Justice (DOJ)[iv] provide background about laws applicable to standards setting in the United States. The US DOJ offers a “Business Review Letter (BRL)” opportunity where organizations may describe proposed process changes in order to obtain the enforcement intentions of the DOJ in advance of implementing the revisions. Some SDOs submit[v] their process for creating a patent policy revision and the text of proposed revisions to the DOJ before implementing the changes. Statements to governments or in other public fora also have important implications. An important truism is that procedures identical in content may differ substantially in practice depending on SDO tolerance to variances from written procedures. The National Cooperative Research and Production Act (NCRP) as amended by The Standards Development Organizational Act (SDOAA) appear in US Code at 15 U.S.C. §§ 4301-4305[vi] . These acts combine to clarify the application of the US antitrust laws to SDOs operating in the United States. SDOs may obtain a degree of shelter from antitrust liability by voluntarily notifying the DOJ of their compliance with criteria. This voluntary notification taken by SDOs differs from a mandatory legal requirement. The DOJ publishes the notification in the US Federal Register in order to broadly inform interested parties of the action. Once such notification is made to and by the US government, participants in the SDO processes and users of the standard rely on the veracity of the statement. The definition of ‘‘standards development activity’’ in the US Code includes actions relating to the intellectual property policies of the SDO. To qualify under the NCRP and the SDOAA organizations must use: “… procedures that incorporate the attributes of openness, balance of interests, due process, an appeals process, and consensus … “ (7) The term ‘‘standards development activity’’ means any action taken by a standards development organization for the purpose of developing, promulgating, revising, amending, reissuing, interpreting, or otherwise maintaining a voluntary consensus standard, or using such standard in conformity assessment activities, including actions relating to the intellectual property policies of the standards development organization. (8) The term ‘‘standards development organization” means a domestic or international organization that plans, develops, establishes, or coordinates voluntary consensus standards using procedures that incorporate the attributes of openness, balance of interests, due process, an appeals process, and consensus in a manner consistent with the Office of Management and Budget Circular Number A–119, as revised February 1998. Any SDO that notifies its processes according to the NCRP and SDOAA is claiming that both its development procedures and actions relating to the intellectual property policies of the SDO are “… procedures that incorporate the attributes of openness, balance of interests, due process, an appeals process, and consensus …” The ASTM notified its Intellectual Property Policy in the Federal Register of October 21, 2004[vii] and the IEEE notified the March 2015 revision of its patent policy in the Federal Register of May 17, 2015.[viii] In 2000, the WTO Committee on Technical Barriers to Trade completed a DECISION OF THE COMMITTEE ON PRINCIPLES FOR THE DEVELOPMENT OF INTERNATIONAL STANDARDS, GUIDES AND RECOMMENDATIONS[ix] . The WTO TBT decision had process implications for SDOs that create international standards, guides and recommendations: The following principles and procedures should be observed, when international standards, guides and recommendations … are elaborated, to ensure transparency, openness, impartiality and consensus, effectiveness and relevance, coherence, and to address the concerns of developing countries. … openness without discrimination with respect to the participation at the policy development level … Any SDO that claims to meet the DECISION OF THE COMMITTEE ON PRINCIPLES FOR THE DEVELOPMENT OF INTERNATIONAL STANDARDS, GUIDES AND RECOMMENDATIONS is claiming that its policy development activity is open without discrimination. Both ASTM[x] and IEEE[xi] have done so. Several SDOs including IEEE and IETF endorsed 5 principles of standards development codified at “Open Stand[xii]” in August 2012. The five principles are described as The Modern Paradigm for Standards. The second principle “adherence to principles” focuses on principles applicable to development of standards. It could be argued that SDO endorsement of the elements of “adherence to principles” such as “Due Process”; “Broad Consensus”; and “Balance” might equally apply to governance processes. Any SDO that endorses the Open Stand principles is claiming that its standards development practices meet the principles. The OMB Circular A-119 Federal Participation in the Development and Use of Voluntary Consensus Standards and in Conformity Assessment Activities[xiii] revised January 2016 includes considerations about the substance of a patent policy more so than the process for revising it: … In order to qualify as a “voluntary consensus standard” for the purposes of this Circular, a standard that includes patented technology needs to be governed by such policies, which should be easily accessible, set out clear rules governing the disclosure and licensing of the relevant intellectual property, and take into account the interests of all stakeholders, including the IPR holders and those seeking to implement the standard. However the circular does include an encouragement of US government agency participation in governance functions: As a floor, the revised Circular encourages agencies to participate fully in the standards development process—through voting as well as standards body governance— An SDO does not violate law if it does not follow the definitions in the Circular. Rather the Circular describes what sort of voluntary standards US government agencies ought to consider using. An SDO that does not meet the criteria in the Circular could jeopardize US government use of its standards. SDOs choose different governance procedures incorporating varying degrees of “balance of constituencies” and consensus decision making The relative importance of consensus decision making in the SDO process for revision of its patent policy can be assessed by what the SDO governance processes state about consensus and what definition of “consensus” is used. A variety of definitions of “consensus” exists: The OMB circular A-119 defines consensus: … general agreement, but not necessarily unanimity. During the development of consensus, comments and objections are considered using fair, impartial, open, and transparent processes. ANSI does not specifically define the term “consensus.” However in its essential Requirements (ERs) applicable to development of American National Standards (ANS) ANSI specifies “due process” requirements for the development of consensus: 1.0 Essential requirements for due process These requirements apply to activities related to the development of consensus for approval, revision, reaffirmation, and withdrawal of American National Standards (ANS). Due process means that any person (organization, company, government agency, individual, etc.) with a direct and material interest has a right to participate by: a) expressing a position and its basis, b) having that position considered, and c) having the right to appeal. Due process allows for equity and fair play. Both ETSI and ISO define[xiv] “consensus” as: … General agreement, characterized by the absence of sustained opposition to substantial issues by any important part of the concerned interest and by a process that involves seeking to take into account the views of all parties concerned and to reconcile any conflicting arguments. NOTE: Consensus need not imply unanimity. SDO governance processes to revise their patent policies illustrate a variety of approaches and degree that “balance” of constituencies and “consensus” decision making apply in the approach. Interpretations of the ANSI[xv], IEEE, ETSI, IETF and ISO/IEC/ITU processes are elaborated below[xvi] The ANSI ERs contain the ANSI patent policy[xvii]. The ANSI ERs: Due Process requirements for American National Standards[xviii] apply to the 243 SDOs accredited[xix] by the American National Standards Institute (ANSI). Three committees of ANSI, the National Policy Committee (NPC), the Executive Standards Council (ExSC) and the IPR Policy Committee (IPRPC) are involved in approving revisions to the ANSI patent policy[xx]. Each of these committees have selection criteria related to balance of constituencies to be considered in membership. Responsibilities for these three committees according to the ANSI Bylaws are: The NPC shall be responsible for broad-based policy and position decisions regarding national standards issues and government relations and public policy issues; … “In making these appointments, the Chair of the Board will endeavor to ensure that NPC members represent a balance of interests from membership groups concerned with the activities of the NPC.” The ExSC is responsible for “overseeing the accreditation of standards developers”… “pursuant to procedures and policies approved by the National Policy Committee”… “Members should, to the extent possible, represent the broadest interests of all standards developers and/or users. Next in order of priority, members should represent their assigned interest category (i.e., Organization Member, Company Member, Government Member, Consumer Interest Council, member-at-large) rather than their employer’s specific interests ….” The IPRPC is responsible “for developing Institute positions on issues relating to the incorporation of essential patents or other proprietary intellectual property in national, regional or international standards” … “In making these appointments, the Chairman of the Board will endeavor to ensure that IPRPC voting members represent a balance of interests from membership groups concerned with the activities of the IPRPC.” Any stakeholder may propose changes to the ANSI patent policy or any aspect of the ERs. The ExSC is the committee ultimately responsible for making final decisions on changes to the ERs. The ExSC as a matter of course solicits input from the IPRPC on: Changes to the ANSI Patent Policy; Novel interpretations of the ANSI Patent Policy; Public comments on changes to the ANSI Patent Policy; Novel patent policies submitted by ASDs seeking accreditation or reaccreditation With respect to possible changes to the ANSI patent policy, in recent history an IPRPC Task Force open to any interested member of the IPRPC studies the matter and agrees (or not) by consensus to recommend to the IPRPC a change. When the IPRPC contemplates some change to the patent policy, the IPRPC ballots the proposed change at a meeting or through correspondence. A “super majority” of two-thirds of the yes and no votes cast must be positive and the yes votes must number more than 50% of the eligible voting members. If the ExSC receives a proposed change in the patent policy from the IPRPC it reviews the proposed change at a meeting. Subsequently the ExSC seeks comments on the proposal from interested parties through a public notice in “Standards Action”. Upon ExSC consideration and response to public comments the ExSC either revises the proposal and submits it again to “Standards Action” or votes to approve the policy revision and forwards it to the NPC. An interested party might appeal a decision of the ExSC regarding a proposed revision of the ANSI patent policy. The ANSI ExSC has an appeals process and the disposition of an appeal at the ExSC might be further appealed to the ANSI Appeals Board. While ANSI has processed appeals related to application of the patent policy, to date there have been no appeals about the process to create or revise it. The NPC receives the recommended change from the ExSC and approves the proposal (often as a consent agenda item at an NPC meeting). However the NPC may return the proposal to the ExSC for further work if substantive comments arise at NPC. According to the operating procedures of the NPC, the chair and NPC voting members are expected to consider the views of non-voting members and others in seeking consensus or resolution if a vote is required on any matter. At the beginning of each year, ANSI publishes new ERs including revisions and sends a compliance form[xxi] to be returned by its accredited standards developers (ASDs) by March of the year. However, ASDs may request an extension of time to return the form and with respect to implementing changes to patent policies ASDs may also have some leeway. The IEEE-SA patent policy is part of the IEEE-SA bylaws. The IEEE-SA bylaws[xxii] state the means for changing the bylaws: The IEEE-SA Standards Board Bylaws are created and amended by the IEEE-SA Standards Board, with final approval by the IEEE-SA BOG Modifications to these bylaws and the reasons therefore shall be mailed to all members of the IEEE-SA Standards Board at least 30 days before the IEEE-SA Standards Board meeting where the vote on these modifications shall be taken. Two-thirds of the voting Board members present at the meeting shall be required to approve any modifications. The IEEE-SA Patcom[xxiii] plays a significant role supporting this process. The most recent change to the IEEE patent policy produced a revision effective March 2015. Following discussion at a Patcom meeting in March 2013, an Ad Hoc group of Patcom developed four iterations of a revised patent policy and held four meetings. The Ad Hoc used a drafting subcommittee to prepare drafts for review and revision by the Ad Hoc. IEEE-SA created a Patent Policy Dialog (PP-Dialog) email reflector and a public website where iterations of the drafts were available for review and comment by interested parties. At a meeting in June 2014[xxiv] Patcom voted to forward the patent policy proposed revisions to the Standards Association Standards Board (SASB) for their approval consideration. In August 2014, the SASB voted 14 yes and 5 no to approve the proposed policy as received from PatCom, and to recommend that the Board of Governors (BOG) approve the policy, with such modifications as the BOG might propose, and subject to receipt of a favorable Business Review Letter (BRL) from the DOJ[xxv]. In December 2014, The IEEE Standards Association BOG resolved[xxvi] to accept the revised patent policy subject to receipt of a favorable BRL from the U S DOJ and an IEEE Board of Directors resolution of November 2014 that it approve the revised patent policy. IEEE-SA had sought a BRL from the DOJ in September 2014 and received a favorable response in February 2015[xxvii]. In Executive session February 2015[xxviii] the IEEE Board of Directors accepted and ratified the BOG action and set the effective date for the revised patent policy to be March 15, 2015. The IEEE Standards Association bylaws provide for appeals[xxix] of standards actions. Two appeals of the process for revising the patent policy were made. IEEE denied[xxx] appeals filed August 11 2014 and September 18, 2014 mainly on procedural grounds. IEEE stated in the October 22, 2014 response to the second appeal: The rules pertaining to governance (as opposed to technical standards development activities) do not, and cannot, require openness, consensus-building, or the inclusion of individuals who do not have fiduciary duties to the IEEE in the decision making process of IEEE-SA governance committees The IEEE-SA bylaws do not specifically address balance among constituencies and consensus decision making in development of governance processes. However participation on various governance committees at IEEE carries important obligations[xxxi]: – Each Standards Association participant serving on a governing board (e.g., BOG, SASB, and their committees) has fiduciary duties to the IEEE – The rules pertaining to governance (as opposed to technical standards development activities) do not require openness, consensus-building, or inclusion of non-SASB members in the decision-making process – Fiduciary duties include duty of care, duty of loyalty and duty of obedience Senior staff at IEEE state: the reason the IEEE had been able to push through a new policy [patent policy] was that it relies on a democratic process to make changes[xxxii] IEEE standards activities leading to ANS are accredited by the ANSI. ANSI had made the new IEEE patent policy available for public comment in April 2015. The ANSI IPRPC voted Yes: 15; No: 10; Abstain: 11; and Vote not cast: 1 in July 2015 that the revised patent policy complied with the ANSI patent policy. After due consideration the ANSI ExSC approved the re- accreditation of IEEE in September 2015. In February 2016, ANSI considered and subsequently denied an appeal of its reaccreditation of IEEE mainly[xxxiii] on the grounds that the ANSI ERs do not apply to the development of a patent policy and that nothing in the IEEE patent policy itself violates the ANSI ERs. The ETSI process The ETSI IPR policy appears in the ETSI Directives as Annex 6 of the ETSI Rules of Procedures. The current edition is April 20, 2016[xxxiv] A key aspect of the Rules[xxxv] at ETSI is consensus in making decisions. Changes to the Directives are approved at a meeting of the ETSI General Assembly. The most recent change to the ETSI IPR policy was approved unanimously at the ETSI General Assembly in March 2013. In 2002, the ETSI General Assembly identified the need to review the ETSI IPR Policy and created an ad hoc IPR group named the IPR Special Committee, to review the implementation of the IPR Policy but not to change the Policy itself. This ad hoc IPR group has met numerous times and recommended to the General Assembly the policy revision in 2013. Typically, more than 50 representatives participate in IPR Special Committee meetings. The original scope statement[xxxvi] about the ad hoc IPR group approved by the ETSI General Assembly in 2002 contained statements about the use of consensus by the group: to achieve a consensus view on the operation of the IPR policy; to achieve a consensus view on a non-discriminatory and not anti-competitive implementation of the IPR policy; to achieve a consensus view on any required additional operational provisions to ETSI’s IPR policy and participation in the group: The Membership of the GA ad hoc group is to be taken from: Any ETSI Member, in particular Members’ Legal/IPR Dep. Representatives, ETSI Board members, The ETSI Secretariat, The ETSI Councillors, Experts qualifying for legal and IPR related contributions invited by the Chairman. According to the ETSI Chairman of the Board and IPR Special Committee and ETSI’s Legal and Governance Director[xxxvii]: Consensus is the fundamental principle for any type of decision making in ETSI IPR policy changes are developed by consensus Any proposed changes to the IPR policy will be endorsed by the whole membership and finally approved by consensus or weighted national voting. The current IETF statement of patent policy was issued in March 2005 as BCP (Best Current Practice) 79 RFC 3979[xxxviii] Intellectual Property Rights in IETF Technology. There have been several patent related documents since IETF issued its first policy in March 1992[xxxix]. Unique to IETF is that the process described in IETF BCP 9 RFC 2026[xl] to develop BCP documents such as the statement of patent policy is the same as the process to develop other IETF documents. According to BCP 9 RFC 2026: These procedures are intended to provide a fair, open, and objective basis for developing, evaluating, and adopting Internet Standards. They provide ample opportunity for participation and comment by all interested parties. At each stage of the standardization process, a specification [author substitutes the words “Best Current Practices proposal” for the word “specification”] is repeatedly discussed and its merits debated in open meetings and/or public electronic mailing lists, and it is made available for review via world-wide on-line directories. A 1992 statement[xli] well describes IETF culture: We reject: kings, presidents and voting. We believe in: rough consensus and running code. While no aspects of RFC 2026 contain requirements for “balance” in development activity, nor specific requirements regarding using consensus decision making, the following excerpt from 1.2 of BCP 9 RFC 2026 generally describes both of these objectives in aspirational terms: (2) the need to consider the interests of all of the affected parties; (3) the importance of establishing widespread community consensus; Informational RFC 7282 On Consensus and Humming in the IETF[xlii] issued in June 2014 provides helpful albeit less official context on the use of consensus at IETF and the role of “humming” at IETF meetings: The IETF has had a long tradition of doing its technical work through a consensus process, taking into account the different views among IETF participants and coming to (at least rough) consensus on technical matters. In particular, the IETF is supposed not to be run by a “majority rule” philosophy. This is why we engage in rituals like “humming” instead of voting.…We don’t try to reach consensus in the IETF as an end in itself. We use consensus-building as a tool to get to the best technical (and sometimes procedural) outcome when we make decisions. Experience has shown us that traditional voting leads to gaming of the system, “compromises” of the wrong sort as described earlier, important minority views being ignored, and, in the end, worse technical outcomes. With regard to balanced participation, IETF depends on the opportunity for interested parties to contribute a point of view in electronic email discussions of drafts such as within the ipr-wg[xliii] and through comments on public “last call” invitations to comment on BCPs nearing final approval. A revision of IETF patent policy document BCP (Best Current Practice) 79 RFC 3979 was proposed in December 2012. Revision text was discussed within the ipr-wg email list and at a Birds of the Feather “BOF” meeting at the IETF-87 meeting in July 2013. In March 2016 the 8th revision of the proposal was circulated in a last call opportunity for interested parties to offer comments. The next step in the process is transmission of a revised 79 RFC 3979 by the IETF General Area Director. The International Organization for Standardization (ISO), the International Electrotechnical Commission (IEC) and the International Telecommunication Union (ITU) agreed on a Common Patent Policy[xliv] in Spring 2007. Each of the organizations has its own process for revising and approving their rules regarding patents in their standards. However the three organization’s agreement on a Common Patent Policy for ITU-T/ITU-R/ISO/IEC[xlv] was a significant strategic accomplishment in 2007 facilitated by the World Standards Cooperation[xlvi] (WSC). The WSC meets annually and comprises senior staff and members of the ISO and IEC and ITU. The WSC was created in 2001 and decided in 2005 to work toward a joint patent policy approach among its three members. ISO and IEC Joint Directives The ISO[xlvii] and IEC[xlviii] are private sector organizations headquartered in Geneva that develop and publish voluntary international standards. Both ISO and IEC have a central office staff but the main the work of developing ISO and IEC standards is by national body members of the organizations. For example in the United States ANSI is the member body of ISO and the US National Committee (an ANSI committee) is the member body of the IEC. Development of ISO and IEC standards and participation in ISO and IEC standards work is governed by The ISO/IEC Directives[xlix]. ISO and IEC standards references to patented items is addressed in Section 2.14. The full text of the Guideline for Implementation of the Common Patent Policy for ITU-T/ITU-R/ISO/IEC comprises Annex I of the ISO/IEC Directives. Changes to the ISO/IEC Directives require approval of the ISO Technical Management Board (TMB) and the IEC Standards Management Board (SMB). The Joint Directives Maintenance Team (JDMT) reports to both the ISO TMB and the IEC SMB. Changes to the patent related text in the ISO/IEC Directives are matters decided by the ISO TMB and IEC SMB with advice from the JDMT. There are no ISO or IEC “balance of constituency” requirements about membership in the TMB and SMD and JDMT. The members are typically staff and member leaders of ISO and IEC and representatives of national body members of the organizations. While votes may be taken on matters before these groups, the ISO and IEC preference for consensus decision making is high. The ISO/IEC Directives provide in section 5.4 for appeal of TMB decisions. However there have been no appeals relating to TMB decisions about revisions to patent policy text in the ISO/IEC Directives. In 2016 ISO Council mandated creation of an ISO patent group under the ISO TMB. The ISO patent group will meet for the first time in early 2017. 5.2 ITU The ITU is the United Nations specialized agency for information and communication technologies – ICTs. ITU has been an intergovernmental public-private partnership organization since its inception in 1932. ITU’s members includes 193 Member States and 700 public and private sector companies as well as international and regional telecommunication entities. The common patent policy applies to the work of both the ITU-T Telecommunication Standardization Sector and the ITU-R ITU Radio communication Sector. Resolution 1 – Rules of procedure of the ITU Telecommunication Standardization Sector (ITU-T)[l] Assembly defines how ITU-T standards are to be developed and refer in section 9.3.8 to the common patent policy of ITU-T/ITU-R/ISO/IEC. ITU-R has equivalent procedures. The Telecommunication Standards Bureau (TSB) Directors Ad hoc group on IPR is responsible for studies relating to the Patent Policy and its guidelines for implementation. The terms of Reference, Composition and Working Methods of the TSB Director’s Ad Hoc Group on Intellectual Property Rights[li] make clear the consultative nature of the group and its relationship with both the ITU-T and ITU-R as well as the WSC. The IPR ad hoc group has 60 members and meets regularly. Clear from recommendations from the IPR ad hoc group is that consensus if not unanimity is a guiding principle. The Telecommunications Sector Advisory Group (TSAG)[lii] is responsible for setting the rules in Resolution one[liii] containing the patent policy. The TSB Director makes a report to TSAG including any recommendations from the IPR ad hoc group The record of revisions to the Patent Policy, the Forms and the Guidelines[liv] indicate the approvals of the IPR ad hoc group and the endorsement of TSAG since the first text in 1999. Conclusions The process an SDO employs to revise its patent policy is an important aspect of the SDOs competitive posture in the global market place for standards setting. The priority an SDO places on “balance of constituency” considerations in the membership of groups preparing patent policy revisions varies among SDOs. Another discriminator is the role of “consensus decision making” in the process. The greater use of balance and consensus in the process, the greater will be general support for the outcomes of the revision processes. Footnotes [i] The term “SDO” is used uniformly to describe organizations involved in standards activities while acknowledging that the term “Standards Setting Organization (SSO)” may apply. A key characteristic is that the patent policies of all apply to “development activity” [ii] … participants are making substantial R&D investments and contributions to advancing the state of the art. So changing the rules of the game – specifically, revising the IPR incentives – AFTER such intense R&D expense and process has a significant chance of depriving innovators of the benefit of their bargain. Its kind of like the “sunk cost” or perhaps “switching cost” issue that implementers raise – Innovators have invested in significant R&D to contribute substantially to the innovations and success of a standard, but then the rules of the game are changed leaving those same innovators stuck with a standard they’ve committed to with little true opportunity to take what they’ve already invested and start a competing standard. November 30, 2017 Communication to the author from David Long [iii] Maureen K. Ohlhausen Commissioner, Federal Trade Commission elaborated FTC activities in A Pragmatist’s Approach to Navigating the Intersection of IP and Antitrust December 4, 2013 (www.ftc.gov/sites/default/files/documents/public_statements/pragmatists-approach-navigating-intersection-ip-antitrust/131204ukantitrust.pdf). [iv] Renata Hesse, Deputy Assistant Attorney General for Criminal and Civil Operations at the Antitrust Division of the US Department of Justice, Art of Persuasion: Competition Advocacy at the Intersection of Antitrust and Intellectual Property, November 8, 2013 (www.justice.gov/atr/public/speeches/301596.pdf). [v]Department of Justice business review letters applicable to standards setting; conduct of standards setting and Association management programs http://www.gtwassociates.com/answers/doj.htm [vi] See text at https://www.gpo.gov/fdsys/pkg/USCODE-2011-title15/pdf/USCODE-2011-title15-chap69-sec4301.pdf [vii] https://www.federalregister.gov/articles/2004/10/21/04-23535/notice-pursuant-to-the-national-cooperative-research-and-production-act-of-1993-astm [viii] https://www.federalregister.gov/articles/2015/05/27/2015-12673/notice-pursuant-to-the-national-cooperative-research-and-production-act-of-1993-institute-of [ix] docs.wto.org/dol2fe/Pages/FE_Search/DDFDocuments/129845/q/G/TBT/1R12.pdf [x] See ASTM statement at https://www.astm.org/GLOBAL/wto.html [xi] See IEEE statement at https://standards.ieee.org/develop/intl/ieeewto.pdf [xii] “open stand” principles at https://open-stand.org/about-us/principles/ [xiii] https://www.federalregister.gov/articles/2016/01/27/2016-01606/revision-of-omb-circular-no-a-119-federal-participation-in-the-development-and-use-of-voluntary [xiv] ETSI Directives page 135 at https://portal.etsi.org/Resources/ETSIDirectives.aspx and ISO Directives Section 2.5.6 at http://www.iso.org/sites/directives/directives.html#TPSXRefTextDestination-6-sec-sec_2.5.6-30331 [xv] ANSI is not an “SDO” but rather an accreditor of SDOs [xvi] In all cases the descriptions are not sanctioned by the referenced organization but based on the author’s understanding and publically available documentation. The objective is to illustrate the variety of processes in contrast to providing definitive procedures of the organizations. Interested readers must always refer to the specific procedures of the organization for formal interpretations. [xvii] ANSI has the longest history addressing patent issues of any standards organization known to the author. The first statement regarding patents in standards was made by its predecessor organization the American Standards Association in 1932 see http://www.gtwassociates.com/answers/EvolutionANSIPolicy.html#1932 [xviii] See http://www.ansi.org/essentialrequirements/ [xix] See current list of ASDs October 2016 at https://share.ansi.org/Shared%20Documents/Standards%20Activities/American%20National%20Standards/ANSI%20Accredited%20Standards%20Developers/OCT2016ASD.pdf [xx] Description of the process to revise the ANSI patent policy is derived in part from “How to revise ANS procedures” at https://share.ansi.org/Shared%20Documents/Standards%20Activities/American%20National%20Standards/Procedures,%20Guides,%20and%20Forms/How%20to%20revise%20ANS%20procedures_101714.pdf [xxi] See 2016 compliance form https://share.ansi.org/Shared%20Documents/Standards%20Activities/American%20National%20Standards/Procedures,%20Guides,%20and%20Forms/2016%20ASD%20Compliance%20Form_011116.doc [xxii] See Bylaws at http://standards.ieee.org/develop/policies/bylaws/index.html [xxiii] http://standards.ieee.org/about/sasb/patcom/ [xxiv] See minutes of IEEE Patcom June 2014 meeting http://standards.ieee.org/about/sasb/patcom/0614patmins.pdf [xxv] See minutes IEEE SASB August 2014 meeting http://standards.ieee.org/about/sasb/0814sasbmin.pdf [xxvi] See IEEE BOG resolutions at http://standards.ieee.org/about/bog/resolutions.html [xxvii] See IEEE request to DOJ for BRL for the IEEE-SA patent policy and DOJ response at http://www.gtwassociates.com/answers/DOJHTM/DOJ15IEEE.htm [xxviii] IEEE Board of Directors unapproved Executive Sessions Minutes of the meeting 8-9 February 2015 [xxix] See section 5.4 Appeals http://standards.ieee.org/develop/policies/bylaws/sect5.html Persons who have directly and materially affected interests and who have been, or could reasonably be expected to be, adversely affected by a standard within the IEEE’s jurisdiction, or by the lack of action in any part of the IEEE standardization process, shall have the right to appeal procedural actions or inactions [xxx] IEEE Replies of October 22, 2014 and September 18, 2014 to appeals dated September 18, 2014 August 11, 2014 [xxxi] Excerpted from http://standards.ieee.org/about/sasb/nmo_ct.pdf [xxxii] See An SEP licensing system with no rules has no future, says IEEE Standards Board executive http://www.iam-media.com/blog/Detail.aspx?g=f47bb044-3d56-4326-a368-33dbb032678a [xxxiii] ANSI ExSC Appeals panel decision of February 17, 2016 concerning an appeal of the ANSI ExSC’s prior decision to reaccredit IEEE under IEEE’s revised procedures including its revised patent policy [xxxiv] See Annex 6 of ETSI Rules of Procedure containing the ETSI Intellectual Property Rights Policy page 35 https://portal.etsi.org/directives/36_directives_jun_2016.pdf [xxxv] Ibid See for example Article 11 ETSI Rules of Procedures concerning voting by the General Assembly 11.1.1 In all decisions, members shall endeavour to reach Consensus and the definition of consensus in Annex A of ETSI Rules of Procedures https://portal.etsi.org/directives/36_directives_jun_2016.pdf [xxxvi] Creation of a GA ad hoc group on ETSI’s IPR Policy operation ETSI/GA40(02)13 29 October 2002 [xxxvii] From an on line presentation February 2016 organized by Oxfirst where speakers clarified: The views expressed are personal to the respective speaker and do not necessarily represent those of ETSI [xxxviii] http://www.ietf.org/rfc/rfc3979.txt? [xxxix] Evolution of the IETF Patent Policy http://www.gtwassociates.com/answers/EvolutionIETFPolicy.html [xl] See The Internet Standards Process — Revision 3 Request for Comments: 2026 BCP: 9 at https://www.ietf.org/rfc/rfc2026.txt [xli] Dave Clark, Senior Research Scientist, Mass. Inst. Tech, from PROCEEDINGS OF THE TWENTY-FOURTH INTERNET ENGINEERING TASK FORCE https://www.ietf.org/proceedings/24.pdf [xlii] See RFC 7282 at https://tools.ietf.org/html/rfc7282 [xliii] See for example mail archive of ipr-wg at https://mailarchive.ietf.org/arch/search/?email_list=ipr-wg [xliv] http://www.itu.int/en/ITU-T/ipr/Pages/revpatent.aspx [xlv] http://isotc.iso.org/livelink/livelink/fetch/2000/2122/3770791/Common_Guidelines.pdf?nodeid=6295394&vernum=-2 [xlvi] Further information about WSC may be found at http://www.worldstandardscooperation.org/ [xlvii] Further information about ISO may be found at http://www.iso.org/iso/home.html [xlviii] Further information about IEC may be found at http://www.iec.ch/ [xlix] See ISO/IEC Directives Part 1 and Consolidated ISO Supplement http://isotc.iso.org/livelink/livelink?func=ll&objId=4230452&objAction=browse&sort=subtype [l] Resolution 1 Rules of Procedure at http://www.itu.int/pub/publications.aspx?lang=en&parent=T-RES-T.1-2012 [li] See http://www.itu.int/en/ITU-T/ipr/Pages/tor.aspx [lii] See further information about TSAG at http://www.itu.int/en/ITU-T/tsag/2013-2016/Pages/default.aspx [liii] Resolution 1 at http://www.itu.int/pub/publications.aspx?lang=en&parent=T-RES-T.1-2012 [liv] See http://www.itu.int/en/ITU-T/ipr/Pages/revpatent.aspx George T. Willingmyre P.E. is President and founder of GTW Associates. GTW Associates www.gtwassociates.com is an International Standards and Trade Policy consultancy. GTW Associates advises companies, law firms, associations, standards developers and governments on the strategic role of standards and conformity assessment and intellectual property policy practices in competitiveness of businesses, organizations and countries. Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related "Giving Process Its Due When An SDO Changes Rules Of The Game" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.
[…] George Willingmyre writes: The process a Standards Developing Organization (SDO) employs to revise its patent policy is an aspect of the SDO’s competitive posture in the global marketplace. A dearth of research exists on the processes SDOs employ to revise… Source: Giving Process Its Due When An SDO Changes Rules Of The Game […] Reply