Insight Volume 11 Num 1  February 2009  International  standards and trade policy  strategic developments.   Subscribe to GTW Insight 

The World Intellectual Property Rights Organization Standing Committee on the Law of Patents (SCP) will  discuss  a paper on patents and standards  at their next meeting in Geneva March 23 - 27On behalf of the  Institute for Trade Standards and Sustainable Development (ITSSD), GTW President Willingmyre solicits advice and comments on the  paper on patents and standards for consideration in preparing  ITSSD comments to WIPO as an NGO accredited by WIPO. ITSSD previously commented upon the 2008 Report on the International Standards System. 

According to the opinion of Sean Gates of Morrison Foerster, The Federal Circuit’s decision last year in Qualcomm Inc. v. Broadcom Corp is  an  important case involving the intersection of intellectual property and standard setting.  Gates believes the key lessons from Qualcomm are: SSO members may need to assume a duty to disclose relevant IPR even when the written policy is not entirely clear.  The district court in Qualcomm found that the written IPR policies did not explicitly impose a duty to disclose.  The Federal Circuit, however, did find such a duty based on the written policies.  Although the Federal Circuit in the Rambus v. Infineon case stressed the need for clear IPR policies that spell out SSO members’ duties, in Qualcomm, the Federal Circuit found that the written IPR policies imposed a duty to disclose by interpreting the IPR policies’ language in the context of concerns about patent “hold up.”  Other courts may follow the Qualcomm court’s lead. Even if a written IPR policy does not impose a duty to disclose, the courts may be willing to rely on the understandings of SSO participants that such a duty existed.  The Federal Circuit affirmed the district court’s reliance on this type of evidence, and other courts have stated that this type of evidence may demonstrate a duty to disclose even when the IPR policy is plainly ambiguous

The American National Standards Institute (ANSI) Patent Group and Intellectual Property Rights Policy Committee  approved two guideline documents on software in standards and embedded trademarks. ANSI Guidelines on Software in Standards details the inclusion of normative software in American National Standards (ANS) when the software is intended to be extracted for use in implementations of the standard. ANSI Guidelines on Embedded Trademark provides guidance on trademarks, service marks, and certification marks as forms of intellectual property. ANSI's patent policy and accompanying Guidelines for implementation of the patent policy were  also revised  in 2008 

The Information Technology Innovation Foundation convened a briefing  "Globalization and Technology Standards: The Case for Expanded U.S. Leadership" January 13.  China's standards practices were identified as problematic  by a senior-level US standards trade official participating in the event.  Another official noted challenges presented to the US standards system in global competition. 

U.S. standards system is the most diverse system in the world and relies primarily on the private sector

most other nations have a centralized standards system in which the government is the dominant player

Lack of acceptance by other governments of "multiple paths" to international standards

Competition at all levels –shifting centers of influence

Intellectual property rights

The IEEE USA Board of Directors approved its position on US patent reform January 15, this year:    IEEE-USA endorses the need to reform the U.S. patent system and believes predictable intellectual property protection for a full spectrum of technologies and applicants is vital. We believe that the proper way to remediate systemic problems requires fixes that address the root cause(s). A collection of ad hoc palliative measures does not address the underlying systemic problem(s) and promotes uncertainty as well as unintended consequences. GTW Associates is new 2009 member of IEEE USA Intellectual Property Committee which in large part drafted the document.  The next meeting of the IP Committee is March 5. The committee will review all of its current position statements on IP matters 

Ancient History department:  According to U.S. Trade Policy Towards Japan: Where Do We Go From Here? May 8, 1989 Congressional Research Service, Library of Congress William H. Cooper  In the late 1970s, two U.S. manufacturers of metal baseball bats tried to market their products to the Japanese little league. But to do so, they required an official seal to be imprinted on the bat and only the Ministry of Education could issue the seal. The manufacturers were told that the game of Japanese baseball was different from American baseball and only Japanese bats could be used. Only after three years of negotiations and the intervention of high level officials on both sides, did the U.S. manufacturers obtain the necessary approvals. To the best of GTW knowledge US strategic standards interests are now much more closely aligned with  standards policies of METI and JISC  in Japan with credit also to  the US activities of the Japan New Energy and Industrial Development Organization. 

The ISO committee  ballot of ISO CD 26000  Guidance  on  Social Responsibility  has begun. This guideline document has potential for dramatic impacts in the global marketplace. No doubt despite cautions to the contrary in the document itself, we will soon see offers from third party certification organizations to audit to the guideline.   Guido Guertler, retired standards executive from Siemens is a member of the industry stakeholder group to the  ISO initiative.  Guertler has created an excellent web site with helpful background and analysis of the Committee draft document.  GTW strong advises interested parties to review the draft and to participate in the  voting process (closes March 12)  by ISO national body members. For example an excerpt from the guidance  regarding  obligation of owners of intellectual property:  consider the interests of society, human rights and basic needs of the individual when exercising and  protecting their intellectual and physical property rights.  On 10th February 2009 the European Commission  hosted  a plenary meeting of the European Multistakeholder Forum on CSR. The aims of this meeting were to review progress on CSR in Europe and globally, and to discuss possibilities for future joint initiatives. 

The International Federation of Standards Users  (IFAN)  appointed George Willingmyre  "Special advisor" to IFAN.  In that regard  Willingmyre will present strategic issues of interest to IFAN at the ANSI March 11 meeting of the Joint member forums and March 12 meeting of the ANSI Company member forum.  One of the several project activities of IFAN is IFAN PG 14 "Social responsibility".  The IFAN board March 30 - 31  will consider a proposal for the creation of an IFAN working group  "IP and standards."  GTW offers to interested parties further background on the role and potential of IFAN to impact global standards policy matters. 

GTW Associates Associate James Converse  completed an evaluation of a web-based standards management program for  the standards operations of the American Bearing Manufacturers Association whose standards committee activities  GTW Associates supports. 


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