Transcript ITU Workshop on Standards and Intellectual Property Rights (IPR) Issues Update on Standards Policy Activities of the Telecommunications Industry Association (TIA) Amy A.

ITU Workshop on Standards and
Intellectual Property Rights
(IPR) Issues
Update on Standards Policy Activities of the
Telecommunications Industry Association
(TIA)
Amy A. Marasco,
Chairman, TIA Standards and IPR Policy
Committee
(presented by Hung Ling, member of SIPC)
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
Structure
This presentation focuses on important issues
that were discussed within two TIA
committees:
The TIA Standards & IPR Policy Committee (SIPC)
Reports to the TIA Board of Directors
Develops and communicates TIA standards and IPR
policy positions external to TIA
Increased focus on standards and IPR issues worldwide
The TIA IPR Standing Committee (IPRSC)
IPR SC’s primary responsibility is to review and
maintain TIA’s IPR Policy and associated Guidelines
Document, which are available on TIA’s Web site
www.tiaonline.org
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
TIA IPR Policy (a summary)
Currently embedded in Engineering Manual; in
process to be revised as stand-alone document
No objection to drafting a standard including
patented technologies
All patent holders shall indicate a willingness to
make a RAND (with or without compensation)
licensing commitment
Encourage voluntary disclosure of Essential
Patents; no requirement on patent search
Discussion of T&C not permitted in any TIA
standards activity
Has guideline on including Software in standards
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
American National Standards Institute
(ANSI) Proposal Relating to
Conflict/Duplication
In late 2010, ANSI proposed changes to its “Essential
Requirements” (ERs) document
Specifically, ANSI proposed that ANSI Accredited Standards
Developers (ASDs) be required to conduct “a preliminary
comprehensive review of existing projects to ensure that the
contemplated project does not conflict with or duplicate a
previous one,” as well as “outreach to other SDOs involved in
similar areas to ensure that a standard does not already exist
or is under development.”
TIA submitted comments to express concerns
regarding the proposed “good faith” effort
requirements on ASDs to “minimize unnecessary
duplication” of standards absent a proven, “compelling
need” (Section 2.4.3 of proposed ERs)
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
ANSI Proposal Regarding
Conflict/Duplication
TIA believes that these proposed requirements
would hamper the ability of ICT ASDs to respond in a
timely manner to rapidly changing market demands
and inhibit innovation in the ICT standardization
system:
“Namely, such processes could create a ‘race to be first’ incentive,
or in other words, one ASD could, by virtue of publishing an ICT
standard before any others in a general technology area, seek to
preclude further standards development in that area by other
ASDs. TIA submits that this approach could have an adverse
impact on the ability of ASDs to compete and develop standards
in the same technology area that may address different user
needs. This in turn could further inhibit innovation in the ICT
standards development system and the ability of new standards
solutions to compete in responding to changing marketplace
needs.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
ANSI Proposal Regarding
Conflict/Duplication
ANSI held a workshop on this topic on May 12, 2011, titled
“Standards Wars: Myth or Reality?”
Excerpt from workshop report (see
http://www.ansi.org/meetings_events/events/2011/standards
_wars.aspx?menuid=8:)
“During the workshop it became apparent that some
stakeholders clearly believe that multiple standards in a given
market reflect a healthy and competitive environment, while
others maintain that too many standards really means that
there is no standard and so the system is broken.
Sector‐specific needs were also highlighted, particularly in the
ICT space. Many acknowledged that competition is fine in one
or a limited number of sectors or in relation to one type of
standard, but cannot so easily be tolerated in other areas.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
ANSI Proposal Regarding
Conflict/Duplication
On September 23, the ANSI ExSC transmitted its decision
on the proposed changes to the ANSI ERs:
As a result of comments received, ANSI ExSC decided that the
proposed revisions should not proceed as presented in 8096, and
withdrew the proposal.
Instead, the ANSI ExSC has put forth ExSC 8189, which is more
limited and “focuses on the timeliness of the PINS Deliberation
and follow-up process, with a goal of ensuring that agreed upon
actions proceed at a reasonable pace.”
In addition, ANSI is announcing that the ExSC will:
[1] work on developing “additional guidance text for inclusion in the
current PINS Informational Summary or a new related document”
(the PINS guidance document is attached), as well as
[2] form a working group to further develop the proposed definition
of “duplication.”
Lastly, ANSI notes that they continue to work on a public database
to better support stakeholders in standards development.
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
NIST RFI on Federal Engagement in
Standardization
On behalf of the National Science and Technology
Council’s (NSTC) Sub-Committee on Standardization,
NIST (National Institute of Standards and Technology)
sought public comment (Request for Information) on
Federal agency participation in the development and
implementation of standards and conformity
assessment activities and programs
Specifically, comment was sought on:
Standards-Setting Processes, Reasons for Participation and the
Benefits of Standardization
Perspectives on Government’s Approach to Standards Activities
Issues Considered during the Standards Setting Process (including
IPR)
Adequacy of Resources
Process Review and Improvement Metrics
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
NIST RFI on Federal Engagement in
Standardization
TIA’s filing is available here:
http://www.tiaonline.org/gov_affairs/fcc_filings/documents/
TIA%20Comment%20to%20NIST%20on%20Standards%20
022211.pdf
TIA submitted in its comment that voluntary, consensusbased standards promote efficiency and interoperability and
enable access to new technologies and markets
TIA noted that, for governmental entities, the ability to
partake in voluntary consensus standard development has
many benefits and is consistent with goals of the U.S.
Government as reflected in the National Technology Transfer
and Advancement Act and OMB Circular A-119
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
NIST RFI on Federal Engagement in
Standardization
TIA noted support for IPR policies which allow
patent holders to make commitments to offer
licenses to essential patented technology on
reasonable and non‐discriminatory (RAND) terms
and conditions, with or without compensation
TIA noted its endorsement of the GSC-15-affirmed
definition of the term “Open Standard”
TIA noted that mandating the ex ante disclosure of
specific licensing terms within such standards
bodies would have a chilling effect on participation,
contributions and the resulting standards
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
On October 14, the NSTC SoS released its report titled
“Federal Engagement in Standards Activities to Address
National Priorities: Background and Proposed Policy
Recommendations.”
This report is available at:
http://www.whitehouse.gov/sites/default/files/microsites/ostp/
federal_engagement_in_standards_activities_october12final.pdf
This report:
Provides an overview of the current legal and policy frameworks for
government engagement in private-sector standardization and conformityassessment activities;
Describes how the government engages in those activities;
Summarizes stakeholder observations in response to the request for
information about government engagement in standardization (which TIA
submitted comments on); and
Outlines policy recommendations to supplement existing guidance to agencies.
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
Key excerpts:
“Responses indicated that Federal agency participation in standardization
activities can have one of two effects: (a) agency involvement can
contribute positively to standardization activities, resulting in an
overall improvement in product reliability and cost containment or, (b)
agency involvement can limit or hinder the advancement of
technology, resulting in mandates that detract from research and
development efforts in response to market-driven forces.”
“Several questions specific to intellectual property rights (IPR) in
standards were included in the RFI. A number of respondents noted
that there is no one ideal, one-size-fits-all IPR policy and that
standards organizations are in the best position to establish effective
policies for addressing IPR issues related to the standards they
develop. The respondents specifically recommended that IPR policies
of standards organizations need to take into account the interests of
both IPR holders and those seeking to use or implement the IP
included in the standard or standards. Also, standards organization IP
policies should be easily accessible and the rules governing the
disclosure and licensing of IPR should be clear and unambiguous.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
Key excerpts cont’d:
“Agencies should take into account the impact of
their standards choices on innovation and the
global competitiveness of U.S. enterprises,
including the impact of intellectual property
incorporated in standards, and should explicitly
include consideration of conformity assessment
approaches that enable the least burdensome
compliance with standards specified by agencies.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
Key excerpts cont’d:
“A limited set of foundational attributes of standardization
activities are called out in OMB Circular A-119, focusing
on voluntary, consensus standards activities. It is
important to recognize as well the contributions of
standardization activities that take place outside of the
formal voluntary, consensus process, particularly in
emerging technology areas. The following additional
attributes should also be considered, to maximize the
impact of those activities on enabling innovation and
fostering competition, while also assuring fulfillment of
agency regulatory, procurement, and policy missions:
[see next slide]”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
“Transparency: essential information regarding standardization
activities is accessible to all interested parties.
Open Participation: all interested or affected parties have an
opportunity to participate in the development of a standard, with no
undue financial barriers to participation.
Flexibility: different product and services sectors rely on different
methodologies for standards development that meets their needs.
Effectiveness and Relevance: standards are developed in response
to regulatory, procurement and policy needs, and take account of
market needs and practices as well as scientific and technological
developments.
Coherence: the process avoids overlapping and conflicting standards.
International Acceptance: as product and service solutions cross
borders, the public and private sectors are best served by standards
that are international in scope and applicability.
Net Benefit: standards used to meet regulatory and procurement
needs should maximize net benefits of the use of such standards.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
US Government Report on Federal
Engagement in Standardization
Key excerpts cont’d:
“In addition, agencies should give consideration to the following
attributes of standards organization processes:
Access and Availability: the text of standards and
associated documents should be available to all interested
parties on a reasonable basis, which may include monetary
compensation where appropriate.
Clear Intellectual Property Rights (IPR) Policies:
standards organization IPR policies should take into
account the interests of both IPR holders and those seeking
to use or implement the IP included in the standard or
standards. These policies should be easily accessible and
the rules governing the disclosure and licensing of IPR
should be clear and unambiguous.
Timeliness: standards should be available in a timely
manner.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
FTC Request for Comments on
Standards-Setting Issues, including
Patent “Hold-Up”
In early May 2011, the FTC issued a call for comment seeking to
examine the legal and policy issues surrounding the perceived
problem of “hold-up” when patented technologies are included in
collaborative standards; Specific topics were:
Disclosure of Patent Rights in an Standard Setting Organization (SSO)
The RAND Licensing Commitment
Ex Ante Disclosure and/or Negotiation of Licensing Terms
Comments can be found at:
http://www.ftc.gov/opp/workshops/standards/index.shtml
TIA expressed the view that, based on its experience, “patent holdup” is not a systemic problem in connection with standard
development
TIA noted that it “has never received any complaints regarding such
‘patent hold-up’ and does not agree that ‘patent holdup’ is plaguing
the information and telecommunications technology (ICT) standard
development processes.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
Federal Trade Commission Request for
Comments on Standard-Setting Issues,
including Patent “Hold-Up”
“TIA urge[d] the FTC to view ‘patent hold-up’ under a much narrower
scope that reflects the realities of standards-related patent licensing as
opposed to taking a more theoretical approach, and to thus limit
‘patent hold-up’ to instances where the holdup is clearly due to
intentional and deceptive conduct supported by substantial and
substantive evidence.”
TIA noted that “RAND commitments can and do prevent IPR holders
from making the implementation of a standard difficult by refusing to
license or by seeking unreasonable or discriminatory fees after the
industry has been locked into the standard.”
TIA stated that it “does not believe there is a need to define RAND.”
“RAND has been adopted by standards organizations as a flexible
approach to the inclusion of patented intellectual property in
consensus-based standards.”
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
FTC Request for Comments on StandardSetting Issues
TIA further observed that “[e]x ante disclosure of one set of
terms and conditions fails to recognize the diversity in standards,
licensing arrangements, and business interactions. RAND based
policies, however, recognize this diversity.”
The FTC held a forum on June 21, 2011, to examine this topic
further.
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
INFORMATIONAL
EC Horizontal Cooperation Agreement
Guidelines
The European Commission’s DG Competition announced its
“Revised rules for the assessment of horizontal cooperation
agreements under EU competition law” in December 2010 (see
http://ec.europa.eu/competition/antitrust/legislation/horizontal.h
tml)
These Guidelines describe the features of a standardization
process and a related IPR policy that would fall within a “safe
harbour” (Paragraphs 280-286):
While called “guidelines”, they will create legal presumptions as to the
assessment of such procedures and policies under EU competition law
The Guidelines also confirm that standardization procedures and rules that
do not fall within the “New Delhi, India, 19-20 December 2011
safe harbour” do not necessarily raise any competition law concerns, and the
Guidelines outline a list of factors that would underlie any “effects-based”
analysis that would be applied in assessing any such procedures and rules
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union
INFORMATIONAL
European Interoperability Framework
(version 2)
The European Commission also announced its European
Interoperability Framework (version 2) in December 2010 (see
http://ec.europa.eu/isa/policy/index_en.htm)
The document provides a definition and approach for using “open
specifications”
“If the openness principle is applied in full:
All stakeholders have the same possibility of contributing to
the development of the specification and public review is part
of the decision-making process;
The specification is available for everybody to study;
Intellectual property rights related to the specification are
licensed on FRAND terms or on a royalty-free basis in a way
that allows implementation in both proprietary and open
source software.
However, public administrations may decide to use less open
specifications, if open specifications do not exist or do not meet
functional interoperability needs.”
International
New Delhi, India, 19-20 December 2011
Telecommunication
Union
Updates/Alterations to TIA’s Engineering
Manual by its IPRSC
TIA’s IPRSC is currently undertaking an effort to update and
consolidate into one standalone document all IPR-related topics.
New Delhi, India, 19-20 December 2011
International
Telecommunication
Union