On March 23, 2009, Knowledge Ecology International (KEI) organized a Briefing on Patents and Standards at WIPO’s 13th meeting of the Standing Committee on Patents (SCP). The meeting features presentations from Dr. Baisheng An, a Research Fellow at the South Centre, George Greve, President of Free Software Foundation Europoe (FSFE), Ahmed Abedel Latif, of the International Centre for Trade and Sustainable Development (ICTSD), and James Love, Knowledge Ecology International (KEI). Attached are slides from three (South Centre, ICTSD and KEI) of the four presentations (FSFE did not use slides) on patents and standards.
Also, below is the section of the WIPO Report on the Patent system that concerns KEI’s comments on patents and standards.
Annex III, page 36
8 Knowledge Ecology International (KEI)
Part IV of the WIPO Report on the International Patent System highlights the inherent tensions that exist between patents and standards particularly when the “implementation of a standard calls for the use of technology covered by one or more patents”. To some observers, these tensions that routinely arise in the realm of patents and standards can appear as distant and arcane areas with little relevance to the field of international trade. Recent developments in the WTO Technical Barriers to Trade (TBT) Committee, the Internet Governance Forum (IGF) and the increased attention that the WIPO Standing Committee on the Law of Patents (SCP) has paid to patents and standards illustrate both the relevance and the importance of this topic.
Beginning with the WIPO Working Group on Reform of the Patent Cooperation Treaty meeting in May 2004, KEI has underscored the problems faced by standard setting organizations (SSOs) with respect to the disclosure of relevant patent claims.
Standard setting organizations have a legitimate interest in knowing before they adopt a standard if it will be free of patents, or if the patents relating to the standard will be licensed on reasonable terms. Increasingly this is a global problem. The Internet Engineering Task Force (IETF), the World Wide Web Consortium (w3c) and other bodies create global standards. They should know the entire global patent landscape before they act. At present there is no global framework that requires patent owners to disclose patents relevant to the standard.
In establishing standards for new technologies, protocols and platforms, it is generally the case that a standard setting organization (SSO) seeks disclosure of patent claims essential to the working of the relevant field of technology. If there exist relevant patent claims, the SSO will either (a) choose a different standard not encumbered by the patent, or (b) ask the patent owner to agree not to enforce existing or future patent claims against those implementing the standard, (c) request the patent holder to license the patent on a royalty-free basis, or (d) seek a commitment by the patent owner to license on reasonable and non-discriminatory (RAND) terms.
Patent owners are not currently required to disclose such patent claims, except in limited circumstances in some countries. For example, in the United States and some other countries, there is an expectation that patent owners must sometimes disclose patent claims when they are members of the body adopting the standard. This obligation is inadequate, however, because it does not exist in some countries, or to patent owners who are not active in the standard setting process.
The WIPO report highlights that tensions can arise between patents and standards with respect to the disclosure of patents “which become apparent when the implementation of a standard calls for the use of technology covered by one or more patents.” As the International Bureau has noted, current competition and legal remedies may not be enough to solve the inherent tensions that routinely arise in the realm of patents and standards. Reiterating our call at the 12th session of the WIPO SCP, WIPO should consider if the current systems of providing constructive notice regarding patent status to standards making bodies is working well in a global economy. WIPO should also consider whether or not it can facilitate global disclosures of patents on proposed standards, including a possible an instrument on patents and standards that would address both the issue of disclosure and remedies to non-disclosure, not only for members of standards-making organizations, but extending to third parties as well.
KEI notes that issues concerning standards are increasingly global concerns, involving goods and services that move in international trade across borders.
One issue that is very important and highlighted in the WIPO report concerns the disclosure (and non-disclosure) of patents relevant to the implementation of a proposed standard. When goods move in international trade, the systems for such disclosure cannot be based upon the laws of a single country, and there is a strong rationale for global norm-setting in this area. Companies and patent owners who operate in good faith do not rely upon patent ambushes.
We note that many businesses believe that the current systems for disclosure are inadequate, in part because they do not extend outside of the membership of standard-setting bodies, and the disclosures that are made are often deliberately not helpful. Issues of standards are increasingly important for vast areas of the modern economy, including of course information, computing and telecommunications technologies and services, as well many other many other areas, such as certain energy and environmental technologies, and important elements of transportation technologies, to mention a few.
In March 2005, a multi stakeholder group proposed a treaty on access to knowledge. This included a mechanism for managing disclosures on patents relevant to proposed standards.
“Part 6.1 and 6.2 of May 10, 2005 Draft proposal for a Treaty on Access to Knowledge
Part 6 – Promotion of Open Standards
Article 6-1 – Committee on Open Standards
A committee on open standards (COS) shall be established.
Article 6-2 – Disclosure obligations for patents relating to standards development organizations.
(a) The COS shall establish a process and criteria for a Standards Development Organization (SDO) to request a managed disclosure of relevant patent claims for standards relevant to a knowledge good or service. To make such a request, the SDO must be global, with a membership that is open to any party, and the qualifying open standard must:
(i)be adopted and maintained by a not-for-profit organization, and with ongoing development based upon an open decision-making procedure available to all interested parties (consensus or majority decision);
(ii)be published, with the specification of the standard available either freely or at a nominal charge, with permissible to all to copy, distribute and use it for no fee or at a nominal fee; and
(iii)the intellectual property aspects of the standard, including the relevant patents or data, shall be made irrevocably available on a royalty-free basis; and
(iv)there are no constraints on the re-use of the standard.
(i)be published without restriction (e.g., potential implementers are not restricted from accessing the standard) in electronic or tangible form, and in sufficient detail to enable a complete understanding of the standard’s scope and purpose;
(ii)be publicly available without cost or for a reasonable non-discriminatory fee for adoption and implementation by any interested party;
(iii)Any patent or data rights necessary to implement the standards are made available by those developing the specification to all implementers on reasonable and non-discriminatory (RAND) terms (either with or without payment of a reasonable royalty or fee); and
(iv)The process to develop, maintain, approve, or ratify the standard is by consensus, in a market-driven standards-setting organization that is open to all interested and qualified participants.
(b) The request for a managed disclosure process shall include the following:
(i)A description of the SDO
(ii)An initial specification of the standard, including the expected applications for the standard,
(iii)The benefits to the public of the development of the standard,
(iv)Disclosures of patents relevant to the proposed standard that are not responsive to the requirements to be specific with regard to the relevance of the patent to the proposed standard shall be rejected.
(c) Members agree that a patent holder that fails to make constructive disclosures of relevant patent claims will be prevented from enforcing the patent against the implementation of the open standard.”
Recommendations and Suggestions
- The SCP should gather information and evidence regarding state practice in terms of obligations to disclose patents on proposed standards.
- To facilitate the information gathering process, the SCP should develop a questionnaire for WIPO member states.
- Innovative businesses and consumers should be given a forum on the WIPO web page to share their views on the adequacy of the current systems of managing disclosures.
- The SCP should consider a disclosure mechanism based upon the one proposed in the March 10, 2005 draft of the stakeholder proposal for an access to knowledge treaty.