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AIPLA Mid Winter MeetingSpecial Committee on Standards and Open Source
Michele HermanIntellectual Ventures
January 25, 2012
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What is a Standard?
[a] prescribed set of rules, conditions, or requirements concerning definitions of terms; classification of components; specification of materials, performance, or operations; delineation of procedures; or measurement of quantity and quality in describing materials, products, systems, services, or practices
Reference: National Institute of Standards and Technology, The Abc's of Standards-Related Activities
in The United States, available at http://ts.nist.gov/Standards/Conformity/stdpmr.cfm.
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Types Of Standards
• Government Mandated - Regulatory and Legislative (e.g., Safety, National Security, Privacy, Quality)
• Voluntary Open Consensus Based Standards (e.g., Interoperability, Business forms)• NTTAA• OMB Circular A -119
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JTC1
IEC
AFNOR
DIN
BSI
SCC
GOST
JISC
CESI
OtherDGN
ANSI
National Standards Bodies
ITUR
D T
PASC
ETSI
CEN/CENELEC ICAITI
ECMA
CANENA
COPANT
ISO
Regional Standards Bodies
Global Standards Bodies
Global Standards Arena
Source: Based on diagram from Clyde Camphttp://www.crcamp.com
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DISCLAIMERThe information set forth in this presentation is accurate to the best of our knowledge. However, all such information is non-binding and subject to change. Accordingly, such information should not be relied on for the purpose of defining the terms of any particular engagement or transaction. Rather, such terms can only be defined pursuant to properly executed and definitive legal agreements that have been approved in advance by our Board.
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Standards Development Process
Final Approval by Oversight Body
Initiate Project
Develop Committee Draft
Agree on Committee Draft
Issue Committee Draft Ballot
Resolve Ballot Comments
Develop Consensus and Issue New Ballot
Develop Consensus and Issue Final Ballot
Publish
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SSO Standards Development Process Comparison
ITU ETSI TIA WiMAX
Project Initiation
Min. 4 mo plus time for 4 submissions & approvals
Min. 1 mo plus time for TB adoption
Formulating Group (FG) submits Internal Proj Req
At least 61% WG and Tech Steering Comm (TSC) must approve; WG mtg 7 day notice
WG Approval Time for SG to create and approve standard
3 drafts: early, stable, & approvalWG approval
Time for FG to create standard, reach consensus, and vote
Time for WG to create standard; Min. 14 day ballot (61% WG approval); resolve tech-critical issues
Review Process
Min. 3 mo for 70% of Member States to approve
Min. 30 days for 71% TB approval
Min. 30 days for 51% of quorum to approve
Min. 30 day IPR review by all members
Final Approval
Unopposed w/i SG; Director notification w/i 4 wks
W/i 60 days draft to members; 60 day vote; publish w/i 30 days
Min. 2 wks notice prior to FG mtg where FG recommends publication of std
At least 61% TSC approval; President approval; Board confirmation
Total Time to Publication
Minimum 7 mo plus 4 submissions & approvals, creation of standard, final SG approval, notification
Approx 7 mo plus time for TB adoption, creation of standard, 3 WG drafts and WG approval
Minimum 1.5 mo plus time for FG adoption, creation of standard, FG vote; Secretariat approval
Minimum 1.75 mo plus time for creation of spec, 3 approvals, and 1 confirmation
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Primary Components of an SSO Patent Policy
SSO PATENT POLICY*Covered Patent Claims
DISCLOSUREOBLIGATION
LICENSINGCOMMITMENT
Common Frameworks•Disclosure Based with License Statement (RAND, RAND-RF, no license
•Membership Based (RAND or RAND-RF)
•Membership Based with Opt Out (RAND, RAND-RF)
•Membership Based with Patent Disclosure (RAND)
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Possible IPR Trigger Points
• Joining SSO• Contributing• Ballot Reviews• Draft Approved by Technical Committee• Final Version Approved by Oversight Body• Publication
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SSO Patent Policy ComparisonFormal SSOs
ISO/IEC/ITU ANSI ETSI CESI
Mandatory Disclosure No No Yes (no search required)
Yes (no search required)
Limited to Essential Claims
Yes Yes Yes Yes
Parties Subject to Policy
Participants None Members Members (but disclosure is limited to knowledge of members’ representatives)
License Statement RAND, RAND-RF, or unwilling to license
RAND or RAND-RF but Patent Holder is not required to submit statement
FRAND or unwilling to license
RAND-RF, POOL, RAND, or no license (not available for own contributions)
Negotiations Privately between licensor and licensee
Privately between licensor and licensee
Privately between licensor and licensee
Does not address
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SSO Patent Policy ComparisonCONSORTIA
Bluetooth SIG WI-FI Alliance MIPI AllianceMobile Industry Processor Interface
*CCSAChina Communications Standards Association
Mandatory Disclosure No No (Disclosure is encouraged and based on personal knowledge, no search is required)
No Yes (no search required)
Limited to Necessary (e.g. Essential) Claims
Yes Yes Yes No
Parties Subject to Policy
Members Members Members Members, Non-members (e.g. Participants), Observers
License Commitment (is required as a condition of membership)
RF RAND, RF, or unwilling to license ( Licensing of Necessary Claims requires the submission of a Free Form Patent Statement)
Hybrid RF/RAND RAND, RF, or unwilling to license ( Licensing of related patents requires submission of the CCSA Patent Licensing Declaration Form and/or a Free Form Patent Statement)
Negotiations N/A Privately between licensor and licensee
Privately between licensor and licensee
Privately between licensor and licensee* CCSA is technically considered a National Body of China
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How is the Ecosystem Doing?
•Criticism of the Standards Ecosystem• Market confusion: Too complicated to navigate• Inefficient: Too many SSOs with too much redundancy• High Cost: Too many policies and procedures to track
•Praise for the Standards Ecosystem• Very responsive to market needs• Inclusive of all interests and stakeholders• Drives innovation• Values IP creation
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Global Reaction
• US-based SSOs and companies create and own majority of standards-based IP
• Other countries are pursuing policies to promote their own indigenous innovation and to generate domestic IP• Draft EU Horizontal Guidelines• BSI PAS to Standardize Standards• SAC/CNIS proposals for single IPR policy and implementation
rules in China• India’s eGovernment standards patent policy