Hoping to head off intellectual-property disputes in standards efforts, the IEEE Standards Association (IEEE-SA) is clarifying and strengthening its patent protection policy. But the changes don't appear to resolve an EDA standards dispute that's based in part on IP protection concerns.
The IEEE policy is largely based on voluntary "letters of assurance" in which patent holders state their claims and licensing intent. Under policy changes that will take effect this week, the IEEE is tightening some of the requirements for letters of assurance and will require that all participants in standards efforts disclose any information they may have about patents that are potentially essential to the standard.
The IEEE-SA's intent is to "clarify and maintain the balance between implementers of standards and patent holders, assure people that they can rely on the letters of assurance and, hopefully, allow better information and more-informed choices among different technical proposals," said David Law, the chairman of the IEEE patent committee.
The policy will apply to all IEEE working groups, including the IEEE P1801 low-power study group, which expects to become an official working group following a meeting this week of the IEEE New Standards Committee (Nescom). That working group was founded by backers of the Accellera Unified Power Format (UPF), which seeks to provide a consistent low-power specification format for the IC design flow.
But UPF has a rival: the Common Power Format (CPF), developed by Cadence Design Systems Inc. and now under the auspices of an independent EDA standards organization, the Silicon Integration Initiative (Si2). Cadence apparently believes Si2 has a superior IP protection policy, and company representatives have cited that policy as a reason for opposing the transfer of CPF copyrights to the IEEE P1801 group.
At first glance, the policy differences between the IEEE and Si2 appear subtle. But they raise difficult questions about which disclosures and licensing terms should be required and which should be voluntary, when and how patent claims should be made, and whether Si2's reciprocal "reasonable and nondiscriminatory" (RAND) licensing approach protects IP or makes it more vulnerable.
In any case, concern about IP protection in standards efforts is growing, said Si2 president Steve Schulz. "In the last three to four years, there's been a dramatic shift" in awareness as high-profile disputes with potentially wide-ranging repercussions for IP users have hit the courts, he said.
EDA standards used to be fairly simple, but no more, he said. "We're dealing with more and more things that get closer to design methodologies and manufacturing secrets. Large semiconductor companies care a great deal about not risking accidental loss of protection by virtue of members' participating in any kind of consortia efforts." Si2's membership includes many of the world's largest semiconductor companies.
Letters of assurance
Conceptually, the IEEE's patent protection policy is simple. At every working group meeting, the chair asks participants to identify any patent claims of which they're aware. If any claims emerge, the chair will contact the patent holder and ask for a letter of assurance that will state the patent holder's intent.
"If participants are personally aware of any essential patent claims, they are required to inform the IEEE of the name of the holder," said Law. "That's something we've clarified."
With the new policy, the letter of assurance must come on a standard IEEE template, as opposed to a free-form letter. And the letters are now irrevocable from the day of acceptance. Further, "affiliates" are bound by the same terms. This means that if an entity sells or transfers a patent, whoever receives it is bound by the terms in the letter of assurance.
Letters of assurance may include the maximum royalty rates the patent holder will charge, along with a sample license agreement. This information was not permitted before, and it may allow for relative-cost comparisons, Law said.
The letters of assurance let patent holders choose their own licensing terms, which could include RAND or reciprocal RAND. They could also state that the patent holder has no intention of licensing the IP.
While the IEEE has no set period for making patent claims, Si2 issues a "call for patents" 60 days before balloting. If members don't respond, there is a "default licensing clause" that assumes the members are willing to offer a RAND license should any patent claim emerge. "It's like, 'Speak now or forever hold your peace,' " said Schulz.
If members respond to the call for patents, there are two options. One is to grant a RAND license. The other is to file an exclusion certificate if they're unwilling to grant the license. Magma Design Automation filed an exclusion certificate earlier this year, at the end of the 60-day patent exclusion period for CPF.
Cadence declined to provide detailed objections to the IEEE's patent protection policy, but Pankaj Mayor, group director for industry alliances at Cadence, said RAND licensing is key to the adoption of standards. "It avoids situations where companies may assert a patent to try to unfairly block the standard," he said. In the IEEE, Schulz noted, RAND licensing is an option; in Si2, it's required.
Schulz said two IP protection features are crucial for the CPF standardization effort, undertaken by Si2's Low Power Coalition (LPC). One is the default licensing clause, which, he said, doesn't exist in the IEEE.
The other is the reciprocal RAND license, which was a condition of Cadence's CPF contribution. It means that recipients of a CPF license agree to license back, under RAND terms, any patents crucial to the standard. "What's important about reciprocal licensing is that as adoption grows, the standard becomes increasingly safe," he said.
Not everyone agrees that Si2's IP protection approach is superior. Karen Bartleson, director of interoperability at IEEE P1801 backer Synopsys, said the LPC's reciprocal RAND license requires that participants agree to cross-license their patents, essentially forming a patent pool.
The IEEE working group "is a safer place," she said, "because you are not automatically cross-licensing your company's entire patent portfolio."
In the IEEE, however, a patent holder could request a reciprocal RAND license. And although Si2 requires RAND, reciprocity is up to the contributor.
The IEEE doesn't do a 60-day call for patents, Bartleson said, because the working groups look for patents "from day one," as opposed to waiting until a standard is finished. And Si2's default licensing clause "doesn't feel right," she said. "If an individual doesn't have full knowledge of their company's patent portfolio, they may be putting part of the company's IP at risk."
Still, Synopsys participates in Si2, and Cadence is involved in several IEEE standardization efforts. Si2 and the IEEE are complementary organizations, Schulz said. "We applaud [the IEEE patent protection] moves as a very positive step, and we look forward to working with them," he said.
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