AIPLA/NIST Meeting –

Hope Shimabuku – RIM [reviewed/edited by delegates]

April 11, 2011

Attendees:

  • NIST: Henry Wixon (Chief Counsel), Mary Saunders (Director, Standards Coordination Office), Gordon Gillerman (Chief, Standards Services Division), Ajit Jillavenkatesa (Program Analyst, Program Office, Office of the Director)
  • AIPLA: Jeffrey Gluck (Connolly Bove Lodge & Hutz), Marc Sandy Block (IBM), Marc Braner (Microsoft), Naomi Voegtli (SAP ), Andrew Updegrove (Gesmer), Chris Dervishian (RatnerPrestia), Jorge Contreras (Washington University of St. Louis), Hope Shimabuku (RIM), Michele Herman (Davis Wright Tremain), Todd Dickinson (Executive Director AIPLA)
  • Monica Barone (Qualcomm) – Absent

NIST-LED: How NIST is Coordinating Behind the Scenes With Other Government Agencies on IP Policy

Introductory comments by Henry Wixon with additional dialogue between AIPLA delegates and NIST representatives

  • NIST is part of the Department of Commerce (DOC)
  • Formal Meetings: Across the DOC, there are monthly meetings with various orgs to discuss IP related topics. Agencies involved in meetings include:
  • USPTO – dialog with Dave Kappos (Director of USPTO)
  • NIST
  • NTIA
  • ITA
  • Technology Transfer is one of the hot topics that is currently being discussed. Informal hearings and 400+ comments . seeking improvements without statutory/regulatory changes.
  • Sub-committees are a common way of coordination to identify standards needs across the industry (e.g., smart grid sub-committee)
  • Coordination of standards needs among agencies include multiple sources:
  • OMB
  • NSTC (Sub-Comms on specific initiatives, e.g., smart grid, healthcare IT, etc.)
  • Trade Session
  • Informal networks within the staff of each group
  • For smart grid, there is SGIP wiki and PAPs
  • DoC takes the lead on many issues and looks both inward and outward to engage the issues
  • NIST reply to Michele inquiry on International issues
  • Many bilateral discussions
  • Also regional coordination, e.g., APEC
  • ISCAM(?) for Smart Grid
  • NIST also works with many trade organizations
  • Education: NIST does not play a role in educating other agencies specifically with respect to IP issues
  • IPR considered for Smart Grid, but NOT a focal issue in other fields
  • See “followup” below regarding AIPLA education session on standards for various agencies

NIST-LED: Impact, if any of OMB Circular A-119 on new areas of public /private standardization such as smart grid, cloud computing, cyber security and healthcare IT

  • RFI generated many varied informed comments – 92 responses were received
  • NIST analysis of responses towards the end of the month
  • Rewrite or open up the OMB Circular A-119 not planned BUT there is interest in improving the circular in other ways [e.g. clarification, interpretation] . Not much need to improve IP but interest in possibly improving coordination, references to regulations, and flexibility in engagement.
  • One concern: Government prescribing policy
  • Defense Dept (DOD) has a handbook used for internal guidance on the circular
  • Standards.gov  lists groups of voluntary SDOs which fall under the circular
  • EPA, APA, are other examples of specific policies
  • NIST looks to other documents to determine what falls under or is included in the circular  they do not only look to the circular for determining what is a voluntary consensus-based association (VCA)
  • A-119 is a general guidance document  NIST does not want it to be very specific for a number of reasons AND would rather like to ask industry/organizations on what they should do instead of having them dictate it
  • Regulatory agencies  value balance
  • Procurement agencies  value flexibility
  • Andy: Many good [new] SDO’s not following A119
  • Jorge: A119 as a threshold document for identifying a “voluntary consensus standard” (VCS) and whether the VCS is compliant  some organizations clearly fall under the A119 but some are rather gray
  • NIST: A119 and NTTAA focus is on employing private[VCS] standards rather than government standards, not as a tool for assessing SDOs; A119 is flexible; revision difficult in that other documents overlap (e.g. TBT, EISA
  • NIST observations: Are there IPR Policy attributes government should favor? Foreign reg inquiry in RFI is noted interest. A119 is narrowly applied when choosing between a government-unique standard and another standard. Questions generally only arise when an agency uses a government-unique standard so the less concerned with determining what actually constitutes a VCS.
  • Smart grid is an experiment; NIST is not interested in dictating how to comply with the mandate to create a framework

AIPLA-LED Dialog based on three broad topics

Todd: Introduction to AIPLA, interest in standards and IP Policy, and AIPLA reply to RFI

Topic 1: Should SSOs have complete flexibility to formulate their own policies (including IPR policies) and procedures?

  • Michele
  • Overview of standards
  • Read AIPLA resolution passed last year with respect to flexibility associated with IPR policies
  • Discussed different types of standards organizations – SDOs and consortia
  • Naomi
  • Patent concerns of interest arise from those who are not part of the standards development organizations
  • IPR Policy – “No one size fits all”

Topic 2: Are there circumstances in which the government, through legislative, regulatory, judicial, or administrative action should require an SSO to adopt a prescribed intellectual property rights policy?

  • Marc (for Monica)
  • Discussion of global activities and summarized Monica points on policy SDO flexibility and importance of incenting patent holders to invest in innovative technologies
  • Sandy
  • Patent issues also arise with SDO members (patent transfers, member withdraws, failure to disclose,etc)
  • Government-supported inventions: Process for govt-funded standards developer to acquire patent title and implementer expectations (RAND commitment?) for govt-funded patents needed for standard
  • Government interest in license commitment “certainty” [patent transfers, opt outs, member withdrawal, corporate entities subject to commitment]; not just a third party patent concern
  • FTC report is a good discussion point for the future
  • Jorge
  • Gov’t should identify a preference for what it needs
  • Market is adjudicator of which standard is accepted
  • Andy – procurement v regulation reflect different government roles
  • Naomi – agencies should coordinate what govt needs are
  • Jeff
  • Discussed unintended consequences of standard setting and associated regulation with respect to patents and innovation
  • ATSC instance where government promoted standard and patent surfaced
  • Emergency Alert case study: Selection of patented technology and vendors should not squelch competition
  • Chris
  • When, if ever, should a government show preferences for certain IPR policy attributes? Government preferences may in some cases result in adverse consequences. Flexibility is important
  • Andy
  • Open Source is current topic and involved in govt procurement
  • Andy noted EIF shift in version 2 from preference for RF to choice between RF-or-RAND, but some countries still follow EIF v 1; also discussed China and India issues
  • License in open standards may not comply with Open Source license
  • Michele -- Open standards and OSS work together even for GPL
  • Andy – “Can” but don’t always – GPL.

Topic 3: What information should SSOs make public about IPRs?

  • Marc
  • Discussion on the importance of transparency and visibility into IPR policies, particularly for implementers
  • IP Policy Databases accessible to the public – noting which policy applies to various standards
  • Hope
  • Openness and transparency, such as participant licensing terms, definition of “reasonable” in RAND, and listing patents participants refuse to license.
  • Total licensing costs  ex ante disclosure of licensing terms a solution
  • Michele
  • Distinguish between mere commercial disputes between competitors and actual hold-up
  • Don’t show preferences for information that favor one business model over another due to commercial disputes among competitors

Follow-Up

  • Further discussions to develop educational program with NIST
  • Follow-up Conference Call to discuss NIST’s impressions of the RFI responses – schedule about 45 days out
  • NIST interest in smart grid discussions being documented [for future govt efforts]