Questions have arisen concerning the proper interpretation of some aspects of VITA’s patent policy.
- Do the required disclosures of patents and pending applications that may contain claims essential to a draft specification require patent searches?
No. As set forth in section 14.1.1, the policy requires only that a WG Member disclose those patents and applications “known by the WG Member and which the WG Member believes” to contain essential claims “after the WG Member has made a good faith and reasonable inquiry into” his or her company’s patent holdings.
- Does a WG Member’s inadvertent failure to disclose an essential patent claim result in his or her company being required to license that claim on a royalty-free basis?
No. The VITA policy specifies only that, if a WG Member “fails to adequately and timely disclose” patent information as required by earlier sections, the consequence is royalty-free licensing but only “to the extent” an undisclosed claim is essential to a Draft VSO Proposed Standard. Any party complaining that a WG Member has not “adequately and timely” disclosed as required would bear the burden of establishing that the nondisclosure was the result of a WG Member’s failure to make the requisite good faith and reasonable inquiry rather than mere inadvertence. Any dispute over whether the good faith and reasonable inquiry occurred will be the subject of informal resolution efforts and, if that fails, a fair and impartial arbitration procedure.
- Does the policy allow a WG to incorporate a VITA Member Company’s patented technology into a Draft VSO Proposed Standard even if the VITA Member Company does not want that technology used and is not willing to license it generally?
No. The policy is not intended to force any company to allow a WG to employ the company’s patented technology in a standard against the company’s wishes; it is intended only to inform WG Members when a Draft VSO Proposed Standard may implement patent claims that will entail license costs. A WG Member is free to inform the WG that patent claims owned or controlled by the Member’s company and implicated in a Draft VSO Proposed Standard will not be available for licensing; and, in that event, the WG should not proceed with the Draft VSO Proposed Standard unless it can be fashioned without elements that implicate those patent claims.
- Does the arbitration procedure give the Executive Director or Board broad discretion to reject an Arbitration Panel’s determinations?
No. The Executive Director’s and Board’s role is only to ensure that the arbitration process has met all applicable procedural requirements and is otherwise consistent with all VITA rules and policies. If there is any such procedural or other problem presented, the Executive Director would return the matter to the Arbitration Panel to cure the problem. Neither the Executive Director nor the Board will under any circumstance second-guess or otherwise modify or reject the Arbitration Panel’s factual determinations, particularly in light of the central role of the Panel Chair who will in all cases be an entirely independent and impartial third party.
- Does the policy replace VITA’s obligations under the ANSI patent policy for proposed VSO sponsored American National Standards?
No. The VITA patent policy is in addition to VITA’s continued responsibilities to adhere to the requirements of the ANSI patent policy in connection with VSO sponsored American National Standards. While the VITA patent policy imposes disclosure requirements only on WG Members, the ANSI patent policy applies to all essential patent claims that may be disclosed and come to VITA’s attention from any source, including from the larger group of interested parties that participate in the prescribed open balloting process for a proposed VSO standard that is submitted to become an American National Standard. Thus, VITA will continue to see to it that the appropriate licensing assurances relating to all such claims are received by ANSI prior to approval of a proposed VSO sponsored American National Standard. If any such assurance is not forthcoming in a timely manner, the VSO will remit the proposed standard back to the applicable VSO Working Group for reconsideration of the proposed standard.
- Assume a WG invites each of three VITA member companies A, B and C to propose a solution for a connector element of a Draft VSO Proposed Standard; all three proposals are covered by patents; and the WG will need to select one of them. A, B and C all represent that they will commit to licenses and to providing license information as contemplated by VITA’s patent policy but not until after the WG makes its decision among the proposals. Is it o.k. for A, B and C to coordinate their responses in this manner? Is it prudent for the WG to make its decision before receiving license commitments and license information?
No and No. Any such coordination among patent owners with competing connector proposals would raise serious antitrust issues. The whole idea behind VITA’s patent policy is to enable a WG to obtain relevant license commitments and information before rather than after making a decision among competing proposals, thereby enabling an informed choice. If A, B and C are represented within the WG, they must submit their Declarations containing license commitments and information at each of the times specified in the patent policy. Even if A, B and C are not represented within the WG, the WG has every right to ask and expect that the relevant license commitments and information be submitted to it prior to a decision among the proposals. That said, however, it is important to keep in mind at all times the prohibition in the patent policy: “The negotiation or discussion of license terms among WG Members or with third parties is prohibited at all VSO and WG meetings.”
Please do not hesitate to bring any other questions or concerns about the patent policy to our attention. We will address them as promptly as possible.