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Experts Discuss Patented Technology in Standards at the ANSI Legal Issues Forum

Washington, DC, Oct 19, 2011

On October 13, 2011, nearly 80 legal experts and members of the standards and conformity assessment community came together for the 2011 Legal Issues Forum: Patented Technology in Standards to examine the policy and legal issues that may arise when patented technologies are included in voluntary consensus standards. The forum was held by the American National Standards Institute (ANSI) as part of the World Standards Week 2011 series of events.

“Choosing between RAND licensing commitments and possible alternatives is an important consideration for companies and organizations operating in today’s marketplace,” said Patricia Griffin, ANSI vice president and general counsel. “The Legal Issues Forum panelists addressed the various issues at play and made organizations aware of how standards bodies may be affected when patented technologies are included in voluntary consensus standards.”

Panel 1: The Pros and Cons of RAND: Does RAND Continue To Be the Preferred Approach to Essential Technology?
The first panel examined in depth the RAND (reasonable and non-discriminatory) licensing commitment Moderated by Earl Nied, Intel Corporation’s program director of intellectual property rights and incoming chairman of the ANSI Intellectual Property Rights Policy Committee (IPRPC), the panel featured five expert speakers:

  • Anne Layne-Farrar, vice president of Compass Lexecon LLC
  • Andrew Updegrove, partner, Gesmer Updegrove LLP
  • Joseph Farrell, director, Bureau of Economics, at the Federal Trade Commission
  • Amy Marasco, general manager, standards strategy and policy, Microsoft
  • E. Earle Thompson, vice president and chief intellectual property counsel, SanDisk Corporation

Ms. Layne-Farrar set the stage for the panel’s discussion with an overview on the evolution of RAND. Mr. Updegrove raised possible alternatives in his presentation, “Are There a Few Elephants in the RAND Room?” Mr. Farrell then highlighted the economics of RAND as compared to negotiating licensing terms. In her presentation on the European Commission’s Directorate General for Competition, Ms. Marasco discussed F/RAND (fair, reasonable, and non-discriminatory) commitments with regard to horizontal cooperation agreement guidelines. Closing out the first panel, Mr. Thompson highlighted the benefits of FRAND.

Panel 2: Is Ex-Ante Disclosure and/or Negotiation of Licensing Terms a Safe Alternative to RAND?
In the second panel of the forum, speakers discussed the pros and cons of mandatory or voluntary ex ante disclosure of licensing terms as a potential alternative to the RAND licensing model. Following an introduction by moderator Dan Bart, president and CEO of Valley View Corporation and current chairman of the ANSI IPRPC, five speakers gave their perspectives on the topic:

  • Monica Barone, senior legal counsel, Qualcomm
  • Robert Skitol, senior partner, Drinker Biddle LLP
  • Richard Taffet, senior member, Bingham McCutchen LLP
  • Michael Lindsay, partner, Dorsey & Whitney LLP
  • Jorge Contreras, visiting associate professor, American University, Washington College of Law

In her presentation, Ms. Barone shared a corporate perspective on ex ante disclosure. Mr. Skitol then discussed why accredited standards developers might want to adopt policies that require ex ante disclosure of license terms. Mr. Taffet broadened the panel’s discussion with a presentation on the role that ex ante rules play, while Mr. Lindsay discussed possible alternatives to ex ante disclosure. And Mr. Contreras closed the discussion with a report on a study of ex ante policies funded by the National Institute of Standards and Technology (NIST).

To view the presentations given during the Legal Issues Forum, click here.

View the photo slideshow from the Legal Issues Forum.

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