Effective Date: January 1, 2019
Information Technology Laboratory (ITL)1 Patent Policy - Inclusion of Patents in ITL Publications
This policy applies solely to the development and publication of ITL guidance and/or requirements that could potentially require the use of technology (i.e., method, machine, article of manufacture, or composition of matter) covered by one or more claims of a U.S. or foreign patent. Such guidance and/or requirements may be directly stated in the ITL Publication or by reference to another publication. This includes the following ITL publications: Internal or Interagency Reports (NISTIRs); Special Publications (e.g., NIST SP 500, 800, 1500, 1800 series); and Federal Information Processing Standards (FIPS).
This policy applies to claims by a patent holder, or a third party authorized to make assurances on its behalf. Non-authorized third-party claims are not recognized. ITL may forward non-authorized third-party claims to the patent holder and request a response in accordance with this policy.
This policy does not apply to ITL’s American National Standards Institute (ANSI)-approved American National Standard (ANS). While ITL’s current (and only) ANS is published under the NIST SP 500 series, it is subject to the ANSI patent policy, in accordance with ITL’s ANSI approved procedures and accreditation.
For the unambiguous expression of requirements, etc., see Annex A: Document Conventions for Stating Requirements, Recommended Options, Permissible Actions, or Possibilities.
2. ITL Approach
In general, the use of an essential patent claim (one whose use would be required for compliance with the guidance or requirements of an ITL publication) may be considered if technical reasons justify this approach. In such cases, with the goal of achieving the widest possible adoption of the ITL guidance or requirement, ITL would expect the patent holder to agree to make available to any party desiring to comply with the ITL guidance or requirements a Royalty-Free (RF) or Royalty-Bearing (RB) license on terms which are Reasonable and Non-Discriminatory (RAND).
In the case of NIST ITL cryptographic competitions, ITL may require that candidate cryptographic algorithms be offered on an RF and RAND basis.
3. Public Review2
When ITL draft publications that include guidance and/or requirements are posted for public comment, the following call for patents shall appear in the notice, where feasible, and prominently near the front of the draft publication.
“Call for Patent Claims: This public review includes a call for information on essential patent claims (claims whose use would be required for compliance with the guidance or requirements in this Information Technology Laboratory (ITL) draft publication). Such guidance and/or requirements may be directly stated in this ITL Publication or by reference to another publication. This call also includes disclosure, where known, of the existence of pending U.S. or foreign patent applications relating to this ITL draft publication and of any relevant unexpired U.S. or foreign patents.
ITL may require from the patent holder, or a party authorized to make assurances on its behalf, in written or electronic form, either:
a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or
b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of complying with the guidance or requirements in this ITL draft publication either:
Such assurance shall indicate that the patent holder (or third party authorized to make assurances on its behalf) will include in any documents transferring ownership of patents subject to the assurance, provisions sufficient to ensure that the commitments in the assurance are binding on the transferee, and that the transferee will similarly include appropriate provisions in the event of future transfers with the goal of binding each successor-in-interest.
The assurance shall also indicate that it is intended to be binding on successors-in-interest regardless of whether such provisions are included in the relevant transfer documents.
Such statements should be addressed to: [insert ITL point of contact]”
4. Patent Disclosures
When an ITL call for patent claims results in one or more disclosures, one of the following alternatives may be pursued:
4.1 The patent holder/authorized party provides ITL a general disclaimer assurance letter acceptable to NIST that includes (but is not limited to) the disclosed patent claims.
4.2 The patent holder/authorized party provides ITL an acceptable assurance letter assuring NIST that it will negotiate licenses with other parties that are royalty-free and on a demonstrably nondiscriminatory basis. Such license negotiations are left to the parties concerned and would not involve ITL participation or approval.
4.3 The patent holder/authorized party provides ITL an acceptable assurance letter assuring NIST that it will negotiate licenses with other parties on a demonstrably non-discriminatory basis with reasonable terms and conditions. Such license negotiations are left to the parties concerned and would not involve ITL participation or approval.
4.4 The patent holder/authorized party does not provide ITL with an acceptable letter of assurance as described above. In such case, ITL may determine that the ITL publication shall not include subject matter identified to ITL by the patent holder/authorized party as requiring the use of any claim of its patent for compliance with the guidance or requirements in the ITL draft publication.
ITL publications that may require the use of an essential patent claim shall include a Disclosure Notice using the relevant option below.
Option 1 (when notice and commitment to license have been received by ITL at the time of publication):
NOTICE: The Information Technology Laboratory (ITL) has requested that holders of patent claims whose use may be required for compliance with the guidance or requirements of this publication disclose such patent claims to ITL. However, holders of patents are not obligated to respond to ITL calls for patents and ITL has not undertaken a patent search in order to identify which, if any, patents may apply to this publication.
Following the ITL call for the identification of patent claims whose use may be required for compliance with the guidance or requirements of this publication, notice of one or more such claims has been received.
By publication, no position is taken by ITL with respect to the validity or scope of any patent claim or of any rights in connection therewith. The known patent holder(s) has (have), however, provided to NIST a letter of assurance stating either (1) a general disclaimer to the effect that it does (they do) not hold and does (do) not currently intend holding any essential patent claim(s), or (2) that it (they) will negotiate royalty-free or royalty-bearing licenses with other parties on a demonstrably nondiscriminatory basis with reasonable terms and conditions.
Details may be obtained from [insert ITL point of contact].
No representation is made or implied that this is the only license that may be required to avoid patent infringement in the use of this publication.
Option 2 - (when no notice and commitment to license have been received by ITL at the time of publication)
NOTICE: ITL has requested that holders of patent claims whose use may be required for compliance with the guidance or requirements of this publication disclose such patent claims to ITL. However, holders of patents are not obligated to respond to ITL calls for patents and ITL has not undertaken a patent search in order to identify which, if any, patents may apply to this publication.
As of the date of publication and following call(s) for the identification of patent claims whose use may be required for compliance with the guidance or requirements of this publication, no such patent claims have been identified to ITL.
No representation is made or implied by ITL that licenses are not required to avoid patent infringement in the use of this publication.
6. Patent Disclosures after Final Publication
When a patent claim is received by ITL after final publication, the process described in Clause 4, Patent Disclosures, shall be followed. Any revision to the publication’s Disclosure Notice and contents will be made in accordance with Clauses 4 and 5.
Effective on the date of approval of this ITL Patent Policy, ITL publications identified in Section 1 of this policy shall include information on the terminology used in the publication for expressing recommended options (i.e., guidance) and mandatory requirements.
It may be desirable to also define the terminology for permissible actions or possibilities but that is not required by this policy.
Example document conventions:
The terms “shall” and “shall not” indicate requirements to be followed strictly in order to conform to the publication and from which no deviation is permitted.
The terms “should” and “should not” indicate that among several possibilities one is recommended as particularly suitable, without mentioning or excluding others, or that a certain course of action is preferred but not necessarily required, or that (in the negative form) a certain possibility or course of action is discouraged but not prohibited.
The terms “may” and “need not” indicate a course of action permissible within the limits of the publication.
The terms “can” and “cannot” indicate a possibility and capability, whether material, physical or causal.
2. Clauses 3a and 3b and the two paragraphs that succeed them are based on text from the copyrighted ANSI Essential Requirements: Due process requirements for American National Standards (January 2017).