Standards development organizations (“SDOs”, including consortia) increasingly collaborate with one another, both domestically and internationally, with respect to the development of technical specifications/standards. These collaborative efforts (commonly referred to as “liaisons”) exist in various forms, ranging from (1) an informal, but coordinated effort involving some type of structured cross-communication, to (2) a formal, written agreement between the SDOs establishing each organization’s rights and obligations, to (3) one SDO “normatively referencing” the specifications/standards of a second SDO as a required element of the referencing organization’s own standards.
When successful, liaison arrangements can serve many useful purposes, such as reducing duplication, expediting standards development and adoption, and promoting the interoperability of standards. On the other hand, if not clearly understood and defined at the outset, such liaisons can create real risks and problems not only for the SDOs, but also for the SDOs’ members and for any implementers of standards that are developed by the SDOs.
One of the most common and most problematic liaison scenarios occurs when specifications created in one SDO are subsequently used (in whole or in part) to develop specifications/standards in a different SDO. In particular, while SDOs often own the copyrights in the standards they adopt, they generally do not own the patent rights that may be infringed by implementing the standard. Instead, it is common practice for the SDO members to retain their ownership rights in their patents and only to commit to licensing their patents to implementers of the specific standard under the terms of the patent policy of the SDO that developed the standard. Thus, when an SDO contributes a standard to another SDO’s standards development effort which results in a new and/or different standard, the patent commitments that were made with respect to the original standard may not extend to the newly developed standard effort. With this background in mind, consider the following hypothetical (yet fairly typical) scenario:
SDO 1 develops a technical specification. At some point, however, SDO 1 wishes to hand off this specification to SDO 2 for completion, adoption, promotion, and/or to further ensure the commercial deployment and success of such specification. Even assuming SDO 1 has copyright ownership in the specification and thus has the ability to hand it off to SDO 2 for such further processing, various patent issues and risks may exist. Suppose that there are five key contributors to the specs developed by SDO 1 that are not members of SDO 2. Unless SDO 1 and SDO 2 establish a clear understanding beforehand as to the rights and obligations of these five key contributors, there is the potential for confusion and derailment of SDO 2’s objectives. What if one of these key contributors was only willing to make its original contribution of essential patented technology to SDO 1 because it could do so on a reasonable and non-discriminatory (“RAND”) basis including the ability to charge reasonable royalties, but is unwilling to extend use of such essential patented technology to SDO 2, whose intellectual property (“IP”) policy requires all essential patent holders to commit to royalty-free licensing to all implementers of SDO 2’s standards? Further complicating matters, what if SDO 2 only wants to include a portion of a specification developed by SDO 1 in an SDO 2 standard? Even assuming the two SDOs’ IP policies are similar (i.e., both allow for RAND royalties), if the contributors to SDO 1 agreed to certain licensing terms based on implementation of the SDO 1 specification in its entirety, the partial implementation of the SDO 1 specification by implementers of the SDO 2 standard may give rise to the argument that SDO 1 contributors would not have any obligation to license their essential patented technology to SDO 2’s implementers. In either case, the negative impact on the success of the SDO 2 standard could be significant.
As this hypothetical illustrates, it is essential 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 provides an overview of the risks and core issues that are generally at stake when creating these types of liaison relationships.
More specifically, this paper (1) describes the various ways in which SDOs collaborate with one another on the development of specifications/standards (including through normative references), (2) identifies the principal legal risks associated with such collaborations, and (3) suggests key issues for SDOs to consider as they contemplate the creation of a liaison and/or normative referencing policy to minimize such risks.
It is important to stress at the outset that all SDOs are different, serving different constituents often with unique needs and requirements. As such, it is not possible to design a generic liaison or normative referencing policy that is suitable for each and every SDO. As the discussion below indicates, different SDOs have approached these questions with different points of emphases, undoubtedly driven by the particular needs, characteristics, and operations of their own organizations. This paper does not endorse any one approach or suggest that one is better or worse than the others. Rather, the purpose and hope of this paper is that SDOs will recognize that before they form liaisons with, or normatively reference the standards of, another SDO they should first put in place clear written policies, customized to their organization, that govern these relationships and references so as to avoid ambiguity and legal risks to the SDO and its members/contributors, as well as to implementers of their standards.
The overall formality of a liaison arrangement between SDOs can vary greatly. However, roughly speaking, there are generally two types of liaison relationships that may arise when SDOs wish to assist one another in the joint development of standards – (1) informal liaison arrangements, and (2) formal liaison agreements. Each is discussed below.
SDOs will sometimes collaborate for extended periods of time on the development of a specification or standard without any written documentation as to the applicable rules of governance, IP policy, etc. For example, SDOs like IETF (http://www.rnp.br/ietf/internet-drafts/draft-iab-liaison-mgt-00.txt) that traditionally operate on an informal basis are less likely to have detailed liaison policies and may prefer to retain that informality, to the extent possible, in a joint development arrangement. While such informal collaborations can certainly streamline standards adoption, they also present the greatest potential for legal risks and problems.
Specifically, if there are no written guidelines or rules explaining how such joint standards development will work, a number of fundamental and complex questions will go unanswered, such as the following: (1) how will IP contributions to the joint effort be treated and licensed? (2) what patent disclosure obligations, if any, will apply to the contributors to, and participants in, the collaborative effort? (3) who will own and be in charge of future updates to the jointly developed standard? (4) what licenses will implementers need to create compliant products and what are the permissible terms for such licenses -- royalty-free? RAND? Particularly if the separate IP policies and other governance documents of the collaborating SDOs differ, the absence of a clear document explaining how their collaborative work will be done and how any resulting intellectual property and other issues will be handled can lead to significant confusion and legal problems, thereby undermining the potential efficiency benefits of the informal arrangement.
Recognizing the pitfalls associated with undocumented, informal liaisons as discussed above, some SDOs (such as ANSI, ITU, ISO, OASIS, W3C, OMA, and others) have established formal written procedures and guidelines as to how, with whom, and under what circumstances they may form formal liaisons with other SDOs in order to jointly develop a specification or standard. One of the most common ways such joint development is done is through the establishment of a joint technical committee staffed by members of each respective SDO which operates under policies and procedures specifically designed for such joint effort.
For example, ITU Study Groups engage in active collaboration with ISO, IEC, and JTC1 working groups, as well as with other outside entities, to develop certain standards. Typically, these joint efforts are governed by formal written policies (including IP policies and IP disclosure forms) unique to such joint efforts. In fact, the ITU and JTC1 have developed a “Guide for ITU-T and ISO/IEC JTC1 Cooperation” (http://www.itu.int/itudoc/itu-t/80718.html), which specifies the procedures to follow when ITU-T and JTC1 collaborate to develop an International Standard. ITU and ISO have also adopted a joint patent disclosure form (http://www.itu.int/ITU-T/dbase/patent/index.html) that is to be used for disclosing patent information for common texts developed through these collaborative efforts. One such collaborative effort is the “Joint Video Team” (“JVT”), comprised of members of the JTC1/SC 29/WG 11 and the ITU-T’s SG-16, to develop MPEG-4 Part 10 Advanced Video Coding (AVC). Special guidelines, called “Terms of Reference,” have been established to govern this joint standards effort (see http://www.itscj.ipsj.or.jp/sc29/29w12911jvt.pdf).
Again, the point of such examples is not to endorse any particular liaison arrangement, but instead to identify key issues that should be considered by SDOs when contemplating similar collaborative efforts. The next section discusses in greater detail a number of the key issues that SDOs should consider addressing, in writing, as part of any such joint standards development effort.