International Standard-Setting Policies Unclear On IP, US Study Finds

A new study of 12 leading international standard-setting organisations (SSOs) found a high degree of inconsistency and lack of clarity when it comes to intellectual property rights and licensing. The study also includes analyses on how standards policies are evolving in Brazil, China and India.

The study, available here, is entitled, Patent Challenges for Standard-Setting in the Global Economy: Lessons from Information and Communication Technology.

The study was released today and arose from a request by the United States Patent and Trademark Office (USPTO) to the National Research Council (NRC) to “survey a sample of SSO patent or intellectual property policies, evaluate their effectiveness in practice, and recommend improvements,” according to a release.

An international Committee on Intellectual Property Management in Standard Setting Processes was set up, chaired by Prof. Keith Maskus of the University of Colorado at Boulder. The study director was Stephen Merrill, executive director of science, technology and economic policy at the National Academies of the National Academy of Science.

A study brief on the outcome said, “Because these organizations have diverse stakeholders and constituents with divergent interests, few articulate clear objectives for their intellectual property rights (IPR) policies or clear criteria for FRAND licensing commitments. Moreover, often the policies lack guidance for litigation over the infringement of SEPs and changes in SEP ownership.” FRAND refers to “fair, reasonable and non-discriminatory” terms (known as RAND in Europe).

“In particular,” it added, “SSO policies often do not address whether a SEPs holder with a FRAND commitment should be able to seek injunctive relief or an order barring import of an allegedly infringing product into the United States and whether FRAND licensing commitments transfer with changes in patent ownership.”

The committee decided to examine 12 SSOs addressing standards for consumer electronics, microelectronic products and their associated software and components, and communications networks including the internet, according to the brief.

The organisations studied included: International Organization for Standardization (ISO), International Electrotechnical Commission (IEC), International Telecommunication Union (ITU), Institute of Electrical and Electronics Engineers (IEEE), European Telecommunications Standards Institute (ETSI), American National Standards Institute (ANSI), Internet Engineering Task Force (IETF), Organization for the Advancement of Structured Information Standards (OASIS), VMEBus International Trade Association (VITA), World Wide Web Consortium (W3C), High Definition Multimedia Interface Forum (HDMI), and the Nearfield Communications Forum (NCF).

On Brazil, China and India, the study found variation between the three rapidly growing economies, but said, “In all three cases, standards policies reflect broader industrial goals, but they are also conditioned by multilateral trade norms,” especially in China.

The study looked at “how leading national and multinational standard-setting organizations (SSOs) address patent disclosures, licensing terms, transfers of patent ownership, and other issues that arise in connection with developing technical standards for consumer and other microelectronic products, associated software and components, and communications networks including the Internet,” the study website says.

It attempts to balance the interests of patent holders, other participants in standard-setting, standards implementers, and consumers, it says, and “calls on SSOs to develop more explicit policies to avoid patent holdup and royalty-stacking, ensure that licensing commitments carry over to new owners of the patents incorporated in standards, and limit injunctions for infringement of patents with those licensing commitments.”

Report recommendations include government measures “to increase the transparency of patent ownership and use of standards information to improve patent quality and to reduce conflicts of laws across countries.”

Patent disclosure information should be clear for all SSOs, and the disclosure information made public, it said. They should include measures to increase the quality and accuracy of disclosure data, for instance by requiring updates.

The report supports US and European competition authorities’ views that a FRAND licensing commitment should travel with the patent when it is transferred, and suggests steps to make the information about patent transfers clearer.

On injunctive relief, the report said a FRAND commitment should limit a licensor’s ability to seek such relief, including through a US International Trade Commission exclusion order.

The report provides extensive discussion on the background of standard essential patents and the policy issues surrounding them. Problems inherent in the tension between patent holders and the public interest can arise in “lock-in,” where a certain patented technology is necessary for products to work, and “hold-up,” where patent holders charge royalties well in excess of what the technology cost before being incorporated into a standard.