[A2k] SDO patent disclosure propoal
James Love
james.love@cptech.org
Tue Jan 18 12:26:01 2005
This is the *initial* proposal for a WIPO protocol on the development of
open standards, focusing on the disclosure issue.
Jamie
------
Proposed WIPO Protocol for the Development of Open Standards (PDOS)
Version 1.0
Background and Context
Open Standards. An open standard is a publicly available specification
for achieving a specific task. There are considerable social benefits
of having open standards. When anyone can use a standard, there is more
competition, and a level playing field among competitors. As noted for
example by EU Commissioner Erkki Liikanen, "Open standards are important
to help create interoperable and affordable solutions for everybody.
They also promote competition by setting up a technical playing field
that is level to all market players. This means lower costs for
enterprises and, ultimately, the consumer." (World Standards Day, 14
October 2003,
http://europa.eu.int/rapid/start/cgi/guesten.ksh?p_action.gettxt=3Dgt&d=
oc=3DIP/03/1374%7C0%7CRAPID&lg=3DEN)
Closed Standards. There are also many standards that are closed, and
only available to selected or limited firms, often using proprietary
technology, including selectively licensed trade secrets or patented
inventions.
Standards Development Organizations
There are thousands of Standards Development Organizations (SDOs), each
proposing, refining and negotiating standards for a plethora of tasks
and technical specifications. The most important are global SDOs.
In the course of developing standards, the various SDOs have to address
problems that arise when one or more =93essential patents(s)=94 are
necessary for some to comply with the standard. The patent issue
concerns two aspects. First, the SDO has to determine which patents (if
any) are relevant to the standard. Second, when patents are involved,
the SDO has to determine if there are acceptable licensing terms for the
patented inventions.
Some open standards are free of patents. Others deal with patents under
acceptable licensing practices, including royalty free licensing
(particularly important for software or Internet standards), or
reasonable and non-discriminatory (RAND) licensing.
The issues of disclosure and the acceptable licensing terms are of
course related. An SDO needs to know about the patent landscape, and
the possible licensing terms for essential patents, before a standard is
adopted and firms invest in the implementation of the standard.
The Disclosure Problem
The problem of identifying which patents are relevant to the
implementation of a standard has grown considerably in recent years.
Each SDO has its own policies regarding the obligation of its own
members to disclose patents, but these obligations only apply to patent
holders who are members of an SDO, and often only if they are directly
involved in the standards negotiations. Important patents may be held
by persons outside of the SDO, and efforts to obtain disclosure of
patents may be of limited utility, if owners identify entire portfolios
of patents, without constructive descriptions of how patents are
actually relevant.
Some governments have adopted policies that require members of SDOs
participating in the development of a standard to disclose patents, or
be estopped from enforcing patents against the standard. However, these
rules vary by country, and are not based upon clear statutory rules, and
thus are sometimes litigated. And as noted, these rules have no effect
on persons who are not members of the SDO or the standards process.
Proposal for WIPO Protocol for the Development of Open Standards (PDOS)
The initial proposal for addressing the disclosure problem is as
follows. WIPO would create a protocol either within the Patent
Cooperation Treaty (PCT) or in a separate instrument. WIPO would then
undertake initial test cases, which would demonstrate the value of a new
mechanism for managing the disclosure of patents relevant to an open
standard. The countries that agree to the protocol would be obligated
to support the disclosure process, and to prevent any patent owner who
failed to provide constructive disclosure from enforcing a patent
against the implementation of the standard.
Specific steps to the PDOS would include:
1. Creation of WIPO committee on patents and open standards, referred
to as the CPOS.
2. The CPOS would establish a process and the criteria for an
application by a Standards Development Organization (SDO) to submit an
open standard for a PDOS disclosure.
3. To qualify, the SDO must be global, with a membership that is open
to any party.
4. A qualifying open standard must be:
a. A publicly available specification for achieving a specific task,
b. Feasible to implement without access to proprietary data.
5. The SDO seeking to use the PDOS must be developing a standard that
will be available to the public on non-discriminatory terms under any of
the following three scenarios,
a. The Standard is based upon public domain technologies, or
b. Patents are licensed on a royalty free basis, or
c. Patents are licensed on reasonable and non-discriminatory (RAND)
terms.
6. The CPOS will specify the process for the management of the
disclosure. This process should include the following steps,
a. A description of the SDO, including its policies on membership,
b. An initial request by the SDO to use the PDOS, including
i. An initial specification of the standard,
ii. A narrative of the expected applications for the standard,
iii. The results of disclosures of patents made by members of
the SDO,
iv. The benefits to the public of the development of the standard=
,
v. Fora for the public notice of the standard,
vi. The expected timetable for additional notices of the
standard, as the specifications of the standard change.
c. If the CPOS accepts the request by the SDO to use the PDOS, it
will then draft a PDOS notice. This notice will be published on the
WIPO web site, and also on the web site of the patent office of every
member of the PDOS.
d. Disclosures of patents relevant to the proposed standard will be
made to the CPOS. The WIPO Secretariat will reject disclosures that
are not responsive to the requirements to be specific with regard to the
relevance of the patent to the proposed standard.
e. The process of Disclosure will be repeated as appropriate until
the standard is final.
f. A patent owner who fails to make constructive and informative
disclosures of the patent will be prevented from enforcing the patent
against the open standard in every country that is a member of the PDOS.
Some background readings:
Current Topics in IPR Protection in the Context of Global
Standard-Setting Processes
http://www.wipo.int/sme/en/documents/ip_standards2.htm
Intellectual Property Rights Policies of selected standards developers
http://www.gtwassociates.com/answers/IPRpolicies.html
Criteria for the Evaluation of a patent policy for a Standards Setting
Organization
http://www.gtwassociates.com/answers/draftIPRcriteria.htm
http://en.wikipedia.org/wiki/Standards_Organizations
http://en.wikipedia.org/wiki/Open_standard
W3C Patent Policy http://www.w3.org/Consortium/Patent-Policy-20040205/
--
James Love, Director, CPTech, http://www.cptech.org
Consumer Project on Technology in Washington, DC
PO Box 19367, Washington, DC 20036, USA
Tel.: 1.202.387.8030, fax: 1.202.234.5176
Consumer Project on Technology in Geneva
1 Route des Morillons, CP 2100, 1211 Geneva 2, Switzerland
Tel: +41 22 791 6727
Mobile +1.202.361.3040
james.love@cptech.org