Subject: Patent disclosure propoal

From: James Love <[email-masked]>
Date: Tue, 18 Jan 2005 15:08:58 -0500

This is the draft proposal for a WIPO protocol on the development of
open standards, focusing on the disclosure issue.  We hope to have a 
discussion of this, or an improved version, as part of a broader meeting 
on the WIPO development agenda, in Geneva on Feb 4.

     Jamie

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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.  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=gt&amp;doc=IP/03/1374%7C0%7CRAPID&amp;lg=EN)

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 “essential patents(s)” 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
[email-masked]

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Ipr-wg mailing list
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From: Brian E Carpenter <[email-masked]>
Date: Wed, 19 Jan 2005 08:54:29 +0100

I have difficulty seeing how this would help the IETF. It isn't
clear WIPO would even accept that the IETF is an SDO in their terms.
Also, this process is too complex and slow to have any practical
effect on our process (except the prevention of completely egregious
submarine patents, which is of course a good thing). It does nothing
to counteract the freezing effect of partial disclosures at an early
stage in standards development.

I also can't see any incentive for the IETF to spend the necessary
time (and money) to use this process. It wouldn't relieve us of our
own process.

    Brian

James Love wrote:
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>

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From: "George T. Willingmyre" <[email-masked]>
Date: Wed, 19 Jan 2005 13:57:49 -0500

Hello Jamie:

There   exist US and international "codes of practice" for development of
standards and definitions of what constitutes  "acceptable" standards
development process that any discussion of WIPO activity could benefit from
taking account of before/while developing its own definitions

Below are a few of them that seem relevant. The WTO for example  includes a
process by which standards bodies "self declare" and notify to WTO their
adherence to a code that includes transparency obligations for notice and
comment for specific standards.  Not that any particular code language is
"best" only  that these contemporaneous approaches would be well to factor
in to a  WIPO discussion

OMB Circular A119  interprets the language of the "National Technology
Transfer and Advancement Act of 1995"  which in section 12(d) requires
federal agencies and departments to use standards that are developed or
adopted by voluntary consensus standards bodies except where that would be
inconsistent with applicable law or otherwise impractical.
clause 4 a. For purposes of this policy, "voluntary consensus standards" are
standards developed or adopted by voluntary consensus standards bodies, both
domestic and international. These standards include provisions requiring
that owners of relevant intellectual property have agreed to make that
intellectual property available on a non-discriminatory, royalty-free or
reasonable royalty basis to all interested parties
http://www.gtwassociates.com/answers/Approaches.htm#OMBA119

The WTO agreement on Technical Barriers to Trade contains an  "Annex 3 TBT
Code of good practice for the preparation, adoption and application of
standards " that while it does not address IPR specifically it has as an
element  E. The standardizing body shall ensure that standards are not
prepared, adopted or applied with a view to, or with the effect of, creating
unnecessary obstacles to international trade.  See
http://www.gtwassociates.com/answers/Approaches.htm#TBT%20Code%20of%20Good%20practice

The  PRINCIPLES FOR THE DEVELOPMENT OF INTERNATIONAL STANDARDS,  GUIDES AND
RECOMMENDATIONS from WTO  is much like the Code of Good practice but
intended to apply to "international organizations."   See
http://www.gtwassociates.com/answers/Approaches.htm#ANNEX4ThirdTriennial

Article 8  states, "All relevant bodies of WTO Members should be provided
with meaningful opportunities to contribute to the elaboration of an
international standard so that the standard development process will not
give privilege to, or favour the interests of, a particular supplier/s,
country/ies or region/s. Consensus procedures should be established that
seek to take into account the views of all parties concerned and to
reconcile any conflicting arguments.

ISO prepared its own  Guide 59  Code of good practice for standardization.
It  has many characteristics similar to the TBT Code of Good practice.   The
ISO Guide 59  includes specific IPR requirements. See
http://www.gtwassociates.com/answers/Approaches.htm#Guide59

Clause 3 General Provisions  This code is intended for use by any
standardizing body, whether governmental regional, national or sub-national
level.
Clause 5.8  Standards should not be drafted in terms that include the use of
a patented item unless the use  of such item is justifiable for technical
reasons and the rights holder agrees to negotiate licenses with interested
applicants wherever located on reasonable terms  and conditions

George T. Willingmyre, P.E.
GTW Associates
1012 Parrs Ridge Drive
Spencerville, MD 20868
301 421 4138 facsimile 301 421 0977
www.gtwassociates.com

----- Original Message ----- 
From: "James Love" <[email-masked]>
To: <[email-masked]>
Sent: Tuesday, January 18, 2005 3:08 PM
Subject: Patent disclosure propoal

     Jamie

------

Background and Context

The Disclosure Problem

Mobile +1.202.361.3040
[email-masked]

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