BY JOSEPH A. NAUJOKAS, NAUJOKAS & ASSOCIATES,
ICMA STANDARDS REPRESENTATIVE

In times past, you usually never had to worry about patent infringement when practicing a standard. Those days are gone. Today's rapid technology developments and the desire to get standards to the marketplace quickly have made it very difficult for standards developers to avoid the use of patents, or more generally stated, Intellectual Property Rights (IPR). Add to this, the complexity of technology today, the intense desire to have something unique that everyone must use, decentralization of multinational companies, and other factors. Then consider the task standards developers face, without knowing all relevant existing IPR, IPR not being disclosed until after the standard is complete, and others innocently unaware their IPR is being used in a standard. The user of a standard is now placed in a "buyer beware" patent situation when practicing a standard. Lets first review how the ISO system is supposed to work to minimize the risk of infringement.

In general, standards developers try to avoid using IPR. When the standards developers are aware of an IPR issue, they are supposed to try to work around it. If this is not possible, then the patent holder is requested to submit a disclosure to provide licenses at a reasonable cost in a non-discriminatory manner. In absence of such disclosure, the committee must find a work-around or stop work on the standard. Regardless of what happens, ISO assumes no responsibility in regards to IPR being used in their standards.

This certainly sounds like a reasonable solution but making this work in a practical world is quite difficult. For instance, a patent holder not on the committee may not be aware that the standard uses their IPR. A reasonable license fee is not defined (although we probably would know an unreasonable fee when we saw one). A company may deliberately withhold the knowledge until after the standard has been approved and implemented.

The international card standards committee, ISO/IEC/JTC1/SC17 Cards and Personal Identification, has taken unusual steps to avoid patent problems in their standards. SC17 passed a resolution in 1999, which essentially restated ISO policy in somewhat stronger terms. Then in 2000, a more detailed version of implementation of the policy was proposed. This proposal requires sign-off by all experts on their knowledge of their own companies' IPR as well as any other company's IPR that might affect the standard. This sign-off will be required at all stages of standard development from initial requirements stage through final approval. This was approved pending resolution of comments and approval by ISO.

This proposal has many problems with it, but we shall wait and see what develops, especially the ISO review of the proposal.