IP & Standards Don't Have To Conflict
There has been a lot of tension in the computer industry about standards and intellectual property. Some of it has been fueled by the recent US Court decision favoring Rambus (April 2008) over the Federal Trade Commission. In short, Rambus has contributed patented intellectual property to the DDR SDRAM standards but did not reveal that fact to the standards committee. After the standard was ratified, Rambus sought license deals from makers of DDR SDRAM. It has also filed a number of lawsuits related to the IP contributed to the standard.
We cannot stop developing standards. Without standards, the market for products becomes smaller and everyone makes less money. Imagine a world where there was no standard for house current or batteries. Developing consumer electronic products would be nearly impossible. Without the standardization of major computer components, the cheap PC, cell phone, and music player would not exist. Standards are a vital part of any type of product. There is plenty of room in technology-based products to innovate outside the standard. Apple has to adhere to many different standards in its iPhone yet has come up with a truly innovative product.
Many people in the computer industry want to blame Rambus for being deceptive. I can't say what Rambus' intentions were. However, the fault for this type of fiasco falls firmly on the shoulders of the standards bodies. There are a few simple steps they can take to avoid these type of problems. These should become a standard for standards bodies.
Insure Unfettered Access to IP In Writing
It seems the most obvious thing to do. Insist that everyone who participates in a standards body sign an agreement to only contribute information free of IP entanglements or to license the contribution for free. That way no one does anything sneaky. At the very least, members should agree to reveal any contribution that might be based on encumbered IP before it is accepted by the body. Either members will sign it and the standard is free and clear or they won't and the standards body will know something is up.
Do What Companies Do
Companies worry about their products being encumbered by patents held by others. To combat the obvious negative effects of encumbering patents, they routinely perform prior art searches. Typically referred to as Freedom to Operate and Patent Clearance searches, searchers look for any patents that may pop up and cause problems later. Standards bodies, whose "product" is a standard, should do the same. Even getting licensing agreements up front is not enough. Licensing agreements amongst participants only cover the participants. There is no way of knowing if patents or patent applications are lurking out ready to bite the industry in the leg without a professional prior art search.
Remember, major standards bodies are not shoestring operations. They are sponsored by large multi-national corporations and governments. They can afford this small amount of insurance.
Active Management of IP
A standards body also has to actively manage the IP under their care. Whether it is owned by the body, in the public domain, or licensed by individual members, every submission needs to be tracked against features of the standard. There needs to be periodic checks of defensive publications, patents, and patent applications to insure that no member is violating the agreements of the organization. It is also a good idea to check if patent applications are filed by non-member companies to see if something has happened that would threaten the emerging standard. This is especially important when there are competing standards bodies.
Member companies should also track their contributions to standards against their own IP portfolio. Period checks of the portfolio against agreements that govern those submissions is also a good idea. Otherwise, they may attempt to patent a technology not realizing it has already been contributed to a standard. It is also why processes must be in place to insure that companies contribute openly only what they indent to. It is not unusual to have an engineer expose important IP in a standards meeting inadvertently. Companies need to track what their own people are doing in standards bodies.
These are pretty simple ways to avoid standards encumbered by patents. IP.com can help do this through its InnovationQ software solutions, Patent Search Services, and Prior Art Database.
