1.                  Key Issues for SDOs to Consider When Developing Formal Liaison Agreements

SDOs that have formalized their intent to collaborate on the development of a joint standard typically have (or should) address, in writing, the following key areas governing this joint development process:

1.      Scope:  Have the parameters of the joint effort been defined as clearly as possible at the outset and reduced to writing?  Does each organization have the same understanding of what those parameters are?  If one organization determines that the joint effort has crept outside the agreed-upon scope, are there procedures in place to address these concerns?

2.      Termination and Withdrawal:  Will there be a sunset on the relationship?  If so, will that sunset be on the occasion of a particular event (i.e., development of a specification) or following expiration of a time limit?  If not, is there a process in place for dissolving the liaison relationship?  If one organization unilaterally wishes to withdraw or otherwise sever the relationship, is there a mechanism in place to provide for this?  Does the reason for withdrawal matter?  (See ITU-R Liaison Policy (http://www.itu.int/itudoc/itu-r/publica/res/res9-2_ww9.doc), Annex 1 at 5, 7).

3.      Relationship:  Will one organization be designated lead sponsor (based on expertise or responsibility to be assumed for a particular standard, etc.), or will the SDOs act as joint sponsors of the effort?  (See ANSI Guideline for Cooperative Standards Development Efforts (http://public.ansi.org/ansionline/Documents/Standards Activities/Information Infrastructure Standards Panel/Guidelines.doc))

4.      Procedures:  What procedures will be used in the maintenance of the joint development effort?  Each SDO may have a different style/format that must be followed in drafting/submitting a specification.  If the lead sponsor were an ANSI accredited SDO, for example, the ANSI approved standards writing (i.e., style/format specifications) and approval procedures of the lead sponsor might be selected.  If that is not the case, alternate procedures should be agreed on.  Provisions for procedure modification after the initial agreement should also be considered.  (See INCITS discussion in section III below)  Some of the elements to be considered in terms of procedures are:

·         Administrative Responsibilities:  How will the administrative responsibilities of the joint effort be managed?  (See Memorandum of Understanding on Electronic Business between IEC, ISO, ITU, and UN/ECE (http://www.itu.int/ITU-T/e-business/files/mou.pdf))

·         Organization:  The agreement should set forth exactly how the joint effort will be organized, including voting procedures, any committee chairs, subcommittees, review boards, etc. – both initially and as the process evolves.

·         Dispute Resolution:  The agreement should contain a provision that instructs how to move forward if an impasse or stalemate situation has occurred.

·         Meetings:  Who determines the scheduling, frequency, format, and location of meetings?

·         Funding:  How are the joint activities funded?

5.   Applicable IP Policy:  What IP policy will govern the collaborative effort?  How will essential IP be licensed?  What patent disclosure provision governs?  (See W3C Process Document §10.1.1 (http://www.w3.org/2003/06/Process-20030618/liaisons.html); see also IEEE Cooperation Agreement between IEEE 802.16 and ETSI BRAN, Patent Policy and Procedures (http://www.ieee802.org/16/liaison/docs/80216l-00_12.pdf)).  In the worst case scenario, the two collaborating SDOs may have inconsistent IP policies (e.g., one requires mandatory royalty-free licensing for all Essential Patent Claims covering a standard and the other allows for a RAND licensing option, or one requires patent disclosure and the other merely encourages it).  Unless it is made clear how IP will be governed, the potential for uncertainty, disputes, confusion, and loss of participants’ IP rights is significant. 

6.   IP Management:  How will patent disclosures and licensing declarations relating to the jointly developed standard be received and processed?  Who will maintain the website storing such disclosures/declarations and be the contact point for implementers or potential implementers with questions?

7.   Naming:  How will the approved standard(s) be named?  Will the organizational acronyms of both developing organizations be used?

8.   Announcements:  Who makes announcements regarding jointly developed standards, and when are particular announcements made?  Can public announcements be made unilaterally, or do they require approval by both groups?

9.   Revisions:  If allowed, how will it be determined when revisions are necessary?  Which party will have the responsibility for revising a jointly-developed standard?

10. Indemnification:  To what extent, if at all, will each SDO provide indemnification (either to the other party or to third parties) in connection with potential liabilities arising out of their joint development process and/or any jointly developed standards? 

11. Copyright and Royalties:  Which SDO will retain the copyright in the drafts and approved standards?  How will licensing rights be determined?  How will royalty or exploitation rights arrangements be made?

12. Pricing:  How is the pricing of the resultant product determined?  If both organizations sell the standard, are prices the same?

(See ANSI Guideline for Cooperative Standards Development Efforts (http://public.ansi.org/ansionline/Documents/Standards Activities/Information Infrastructure Standards Panel/Guidelines.doc); ITU-R Liaison Policy (http://www.itu.int/itudoc/itu-r/publica/res/res9-2_ww9.doc); OMA Liaison Policy (http://www.openmobilealliance.org/collaborating/index.html).