Nearly 70 legal experts and other members of the standards and conformity assessment community came together on October 1, 2013, for the American National Standards Institute (ANSI) Legal Issues Forum. Focused on Arbitration of RAND Disputes, this year's event examined significant issues connected to the licensing of standard-essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms. The forum was held by ANSI as part of the 2013 World Standards Week (WSW) series of events.
SEPs are patents that have been deemed essential to the implementation of a given standard. In recent years, an increase in the number of high-profile SEP disputes in the mobile device sector has focused increased attention on what RAND commitments really mean and how they can be resolved more efficiently and without resort to litigation. ANSI's Legal Issues Forum explored the pros and cons of arbitration, which many have pointed to as a possible means of resolution for such disputes.
Following introductory remarks from ANSI president and CEO S. Joe Bhatia, attendees heard a keynote address from Oliver (Ollie) Smoot, past International Organization for Standardization (ISO) president and former chairman of ANSI's Board of Directors. During his speech, Mr. Smoot praised the widespread use by standards developing organizations (SDOs) of the patent policy included in the ANSI Essential Requirements. He highlighted elements of the policy and its guidelines that are intended to reduce the risk of patent disputes, including ANSI's encouragement of early disclosure of SEPs and an early indication of the patent holder's willingness to license on RAND terms.
Following Mr. Smoot's address, Jorge Contreras, an associate professor of law at American University in Washington, DC, moderated an interactive roundtable discussion on issues related to the arbitration of RAND disputes. The following panelists took part in the discussion:
Panelists discussed the legal complications inherent in defining RAND terms and emphasized the importance of balance - ensuring fair compensation for patent holders while also preventing companies from profiting unduly from the inclusion of a patent in a widely adopted standard. Participants praised the federal government for raising concerns regarding RAND disputes in an open, reasonable manner, but cautioned that a flexible approach might be needed due to the varying cultures within different technology sectors and different SDOs.
Comparing the benefits and downsides of litigation, panelists noted the due process protections built into the U.S. legal system, but expressed concerns about the ability of non-expert jurors to fully engage with complex technical issues. With respect to arbitration, panelists noted that proceedings are private and can be arbitrated by an individual with demonstrated technical expertise, but that there can be significant variations in outcome depending upon the arbitrator. Support was voiced by some panelists for arbitration as a method for resolving disputes over the licensing of SEPs, with the caveat that arbitration is likely to be most effective in resolving disputes when it is entered into voluntarily by both parties.