Standards development organizations, known as SDOs, inevitably face patent issues in their work. The ISO MPEG standards committee is perhaps the most successful in the area of patents. SMPTE not so much. While SMPTE prides itself by attempting to model its procedures after ISO, SMPTE caters to a very different set of members, with a far smaller budget, which contributes to problems in the area of intellectual property that would not normally occur in ISO.
MPEG succeeds with intellectual property because it is organized to be pro-business around the world. Formed in 1988, it famously embraced the role of intellectual property in shared technology by creating a mechanism for pooling patents from multiple companies. MPEG offered the opportunity for all players to share the pie, on the basis that it’s better to have a small slice of a very large pie, than to have a big slice of nothing. ISO can accomplish this because it is an international standards body
But standards bodies such as MPEG address the consumer market, which by any measure is massively larger than the cinema market. The entire worldwide footprint of digital cinema media blocks, for example, is less than 2 weeks of worldwide shipments of wireless headsets. In the hierarchy of standards organizations, ISO is top of the ladder. ISO’s membership consists of one representative per country, which in the case of the US, is ANSI (American National Standards Institute). ANSI’s membership consists of numerous standards bodies and organizations in the US, including SMPTE. Neither ISO nor ANSI allow individuals to be members. SMPTE, on the other hand, only allows individuals to be members. Budgets and legal resources are sized accordingly.
SMPTE caters to the media industry, and its smallness and membership of individuals fosters a rich environment of experts for standards development. But when it comes to intellectual property, it is the companies that are the actors. It should be no surprise, then, that SMPTE operates in a very different environment than ISO when it comes to patents. While SMPTE prides itself as modeling policies around those of ISO, its rules for managing patent disclosures are proving to be inadequate.
The declaration of essential claims is where a problem has come up. SMPTE has a professionally prepared patent statement that is to completed and submitted along with an input document to a committee. The purpose of this is to fairly disclose the submission of technology that incorporates intellectual property. If essential claims are declared to exist, the company has 45 days to disclose them. Disclosure is important, as it puts competing interests within the committee on a level playing field. Following disclosure, alternatives can be sought to replace elements that infringe, for example. There is the odd chance that a contentious situation could occur where a competitor disagrees that the essential claims are valid. Not all matters can be resolved in a standards committee. But without disclosure, the playing field will be anything but level.
SMPTE, however, provides no consequence for not following through with an agreement to disclose essential claims. The tendency is to shove enforcement of patent statements off to volunteer chairs of committees. Such chairs are typically engineers, and rarely versed in handling legal documents, nor did they accept the role with the expectation to do so. In the case of 25CSS, one such patent statement has been allowed to go over a year without follow through for essential claims by the submitter of technology. Fortunately, no committee activity based on the input document has yet taken place. But this will change, in which case it would be very wrong to allow non-enforcement to continue.
The right thing to do is to enforce the 45 day rule, and provide a consequence. If a company claims to have essential claims, it must put them on the table within the allotted time frame. If it fails to do so, then the patent statement should be declared void, and the company given the opportunity to re-submit a new patent statement declaring that no essential claims exist. If the company doesn’t wish to to do this, then both the patent statement and the input document should be rejected. A clean and clear set of rules such as these are simple to uniformly enforce and would go a long way towards creating a fair environment for standards development.