Participating In An Sso

Participation in a standard setting organization (SSO) is often a very good choice for a technology company that wants to be a market leader. It is not a decision to be taken lightly. Many commitments go along with membership, and for the company to enjoy the benefits, an attorney should be an active part of the application and membership process. Here are some of the issues to watch and deal with:

• Research the SSO’s track record in the market. Inquire about the SSO among its industry peers;

• Get and review the SSO application and all bylaws. Issues frequently lurk right below the surface of the SSO application;

• Have the attorney participate in the application preparation process. Do not automatically assume you fully understand what is required to protect your intellectual property;

• Understand what intellectual property rights the SSO’s rules cover as they apply to your goals;

• Have counsel manage the patent/intellectual property review process. Different SSO’s require different commitments of intellectual property by their participants;

• Have counsel participate in the SSO representative selection process and make sure those who represent you are identified and authorized. Only employees with authority to bind you should be permitted to do so in conjunction with an SSO;

• Conduct periodic reviews of SSO participation with counsel. Do not make the mistake of participating in an SSO and assuming the SSO’s rules will never change;

• Watch the your term of participation. Time will pass and your participation in the SSO may drop off. Set the groundwork for exiting the SSO well in advance of this;

• Understand the full implications of SSO participation with respect to technology disclosure. Some SSO’s effectively require universal licensing of technology rights, while others may require varying levels of disclosure and licensing;

• Is licensing mandatory? Is licensing royaltyfree? One of the primary issues in the bylaws for the technology developer are technology licensing requirements. Some SSO’s require mandatory licensing at reasonable and nondiscriminatory terms (“RAND”);

• If RAND is required, understand how to apply it.