Intellectual Property and Standards.
Participants in the development of standards, as well as the users of standards, may have an interest in knowing whether there are provisions in a standard incorporating someone’s intellectual property, which may require permission to use someone’s proprietary technology and possibly pay compensation for that privilege. The policies of NEMA and ANSI, as well as international standards organizations, recognize that it is permissible to draft a standard that includes the use of someone’s patent claims if technical reasons justify it, but standards development committees may prefer to avoid incorporating proprietary technology once they know of it.
The primary concern of these policies is the identification of essential patent claims. NEMA has defined an essential patent as claim contained in a patent or published patent application, the use of which is necessary to create a compliant implementation of a mandatory provision in the normative clauses of a NEMA Standard or proposed NEMA Standard when there is no commercially and technically feasible non-infringing alternative. Participants in NEMA’s standards development process are obligated to disclose essential patent claims of which they have knowledge. A participant may self-disclose any essential patent claims they or their employer own or control, or a participant may ask NEMA to query whether another participant or third-party owns or controls any essential patent claims. The obligation to disclose is a continuing one, both before and after a Standard is published.
Disclosure must identify the patent or patent application, the part of the NEMA Standard incorporating an essential patent claim, and an assurance that a license to use the essential patent claims will be made available either on reasonable terms and conditions that are demonstrably free of any unfair discrimination, or without compensation but with other reasonable terms and conditions that are demonstrably free of unfair discrimination.