As described above, there are several ways that SDOs may choose to work together toward a mutual standards-setting goal, including informal and formal liaisons to jointly develop a standard, as well as the hand-off of one SDO’s work to another SDO for further development and deployment. Another common industry practice, “normative referencing,” is yet a further way that SDOs often merge their work, even though there may be little to no direct coordination between them. Generally, a normative reference is an SDO’s reference to a document (in this case, a specification or standard developed in another SDO) that must be followed in order to create a compliant implementation of the referencing SDO’s standard. Properly structured normative references can provide an efficient technique for referencing important and sometimes lengthy documents previously developed by other SDOs. This practice is not without its own risks, however, and the following hypothetical identifies key concerns that should be addressed whenever normative references are considered by an SDO.
SDO 1, in attempting to develop a cable-ready television standard, wishes to normatively reference for the audio portion of such standard an audio standard previously developed by SDO 2 (rather than create the audio portion of the standard from scratch). SDO 1’s IP policy requires essential IP to be licensed on a royalty-free basis. SDO 2’s IP policy, on the other hand, allows its members and contributors to its standards to seek RAND/royalty-bearing licenses from implementers for their essential IP. Thus, if SDO 1 were to adopt a cable-ready television standard that included a normative reference to SDO 2’s audio standard, implementers of the SDO 1 standard – expecting royalty-free licenses – could be surprised to learn that license fees may be required for the normatively referenced SDO 2 audio technology. This could carry many negative consequences, not the least of which would be diminished acceptance of the SDO 1 standard by implementers. Had the members of SDO 1 considered and understood this issue beforehand, they very well might not have made the normative reference to SDO 2’s audio standard, or might have taken other steps, such as seeking royalty-free licensing declarations from the essential IP holders in the SDO 2 audio standard before including the normative reference in the SDO 1 standard.
This situation would only be made worse if, instead of being allowed merely to seek royalties on a RAND basis, SDO 2’s IP holders were allowed to block full access to the IP contained in the normatively referenced document, or otherwise condition access on onerous, private contractual agreements with implementers. For example, what if SDO 1 wished to normatively reference only a portion of SDO 2’s audio standard, as opposed to the entire SDO 2 audio standard? Could IP holders of essential technology in the SDO 2 audio standard argue that any commitment they may have made to license implementers of the SDO 2 audio standard do not extend to those parties who implement only a part of the SDO 2 audio standard (by virtue of their implementation of the SDO 1 standard)?
But what if the essential IP holders to the referenced SDO 2 standard are also members of SDO 1? Doesn’t that solve these problems? Not entirely. Even in this case, SDOs have addressed in different ways the scope of the licensing obligations of such members. For example, some SDOs define Essential Patent Claims to exclude any patent claims covering normatively referenced standards (see, e.g., W3C Patent Policy (§8.2) (http://www.w3.org/Consortium/Patent-Policy-20040205). Others, by contrast, make no such distinction and rather treat all required portions of the standard the same for licensing obligation purposes, regardless of whether or not the portion is a normatively referenced standard (see, e.g., EPCglobal IP Policy (§ 1.7) (http://www.epcglobalinc.org/action_groups/031223EPCglobalIPPolicy12152003A.html). It is thus very important for SDOs to make clear in their patent policies the scope of their members’ licensing obligations for “Essential Patent Claims” in normatively referenced standards. This clarity is particularly important in light of recent case law that places heightened obligations on SDOs to clearly define the difference between required and optional portions of their standards for licensing purposes. (See, e.g., Intel v. Via Technologies, 319 F.3d 1357 (Fed. Cir. 2003) (holding that, since ambiguity existed as to whether a particular protocol was included within a required portion of a standard and therefore subject to a reciprocal royalty-free licensing agreement, the ambiguity would be resolved against the drafter and, thus, there was no infringement by VIA Technologies for royalty-free use of the protocol in question).
To address these potential problems, various SDOs have developed policies to govern their inclusion of normative references in their standards. For example, under the ITU-T’s normative referencing policy (which is set out in Appendix A to this paper), the ITU-T member proposing the inclusion of a normative reference must submit a contribution to the ITU-T study group or working party, which provides the required information outlined in sections 2.2.1 to 2.2.10 of ITU Recommendation A.5. Such contribution must include, for example, a justification for the normative reference, the relationship of the reference with other existing and emerging documents, and the degree of stability or maturity of the referenced document. The study group or working party evaluates the submitted information and comes to its conclusions based on the usual consensus process.
In addition to evaluating the document being proposed for reference, the ITU-T will also consider the referenced organization according to certain criteria (see ITU Recommendation A.5, sections 3.1-3.3). This analysis includes, for example, whether the referenced organization is open to all parties with a material interest in the organization, consistency of the organization's patent and copyright policies with those of the ITU-T, and well documented and fair working methods/processes.
Recently, ETSI adopted a normative referencing policy similar to the ITU’s (included in Appendix A to this paper).
In sum, before an SDO includes a normative reference to another SDO’s specification or standard, it must be sure that it understands the nature and policies of the other SDO, and that the licensing obligations of the essential IP holders to the referenced standard will extend to implementers of the referencing standard in ways that will not deter or stymie the widespread adoption and deployment of the referencing standard.
Liaisons among SDOs can provide an effective vehicle for streamlining the development of standards. At the same time, however, such liaisons – whether pursued as a joint standard development effort, the hand-off of a specification by one SDO to another SDO, or the normative reference by one SDO’s standard to another SDO’s standard – can present legal risks and confusion for the SDOs, as well as for their contributors and implementers. It is essential, therefore, that SDOs understand the key issues surrounding their collaborative relationships with other SDOs in the development of standards and address them before pursuing the adoption and promotion of such standards. This paper has provided an overview of the risks and core issues that are generally at stake when creating these types of liaison relationships. The purpose of this paper is not to endorse any particular method of approaching (and hopefully avoiding) the various problems with SDO liaisons identified above. Rather, it is to raise awareness of the issues and to encourage SDOs to develop written liaison / normative referencing policies -- based on the sample policies of major SDOs discussed herein, but of course customized to the SDO’s own unique processes and constituents -- in order to avoid legal risks and impediments to the SDO’s successful standards development efforts.