From: Karl G. Ruling [kruling@esta.org]
Sent: Thursday, September 21, 2006 1:17 PM
To: psa@ansi.org
Subject: Comemnt regarding the patent policy procedural revision 

I see a problem with the patent policy procedural revision in that it 
has no way forward if

(1) someone says there is a patent that might have bearing on a 
standard being worked on, and 

(2) the patent holder does not offer one of the statements described in 
"3.1.1 Statement from patent holder."

It makes sense that a standard should not be developed that requires 
the use of protected intellectual property, unless that property is 
needed for technical reasons and can be used by anyone on a non- discriminatory basis for a reasonable fee. However, since no standards- drafting organization is qualified or required to make determinations 
of patent infringement, there is no way to determine if a standard 
requires the use of protected intellectual property. 

So, if someone says there might be a patent problem, and the patent 
holder is contacted, but does not offer any assurance of a reasonable, 
non-discriminatory licensing agreement, and does not also say that the 
patent has no bearing on the standard, there is no way forward. The ASD 
can't determine that the patent is or is not relevant to the standard, 
since the ASD is not qualified to make judgments about patent 
infringement by products that might be made using the standard, and the 
ASD also can't get any assurance that the standard will be licensed. 
The ASD is stuck. All it can do is abandon the project. 

This opens a door for mischief. Any project could then be stopped by a 
single person saying, "I think this might infringe my patent, and I 
won't license it." It would make no difference if the claim were 
completely bogus. The ASD is neither qualified nor required to evaluate 
the validity of the claim. "3.1.4 Responsibility for identifying 
patents" says quite rightly that "neither the ASD nor ANSI is 
responsible for identifying patents for which a license may be required 
by an American National Standard or for conducting inquiries into the 
legal validity or scope of those patents that are brought to their 
attention."

Even if no one ever says there might be a problem with possible 
infringement on a patent, there is no way an ASD can ever assure that 
there isn't a patent somewhere that might have bearing on a standard. 
It is impossible to conduct a world-wide patent search and be assured 
that all possible patents, and all patents for which approval is 
pending, have been found. Nor is it possible to determine how these 
patents might have an impact on products developed using a standard, 
since the products do not exist at the time the standard is written. 
Ultimately it is the judge in a patent infringement suit who decides if 
a product infringes or not. 

I suggest the following changes:

In 3.1.1, change the first line to read: "The ASD shall make a good 
faith attempt to receive from the identified party or patent holder 
either:"  

In 3.1.3, change the first line to read: "Whether or not the ASD 
receives from a patent holder the assurances set forth in a and b 
above, the standard shall include a note substantially as follows:"  

I have added "a and" to the line because it is possible for a patent 
holder to change his or her mind after issuing the assurance in a. It 
is highly unlikely that a patent holder will agree to forever waive the 
right to sue infringers, or will consider himself to be bound by such 
an agreement.  


Best regards, 
Karl G. Ruling 
Technical Standards Manager 

ESTA 
875 Sixth Avenue, Suite 1005 
New York, NY 10001 
1-212-244-1505 
Fax 1-212-244-1502