Coffee & Standards A Practitioner's Guide

Appendices

Appendix B: Standards Engagement Checklist for Counsel

This is the operational companion to Chapter 15. Chapter 15 explains the reasoning — why the things you check matter, and what goes wrong when you skip them. This appendix is the prompt list itself: scannable, lifecycle-organized, and designed to be opened before a particular engagement rather than read straight through.

It is not a substitute for judgment, and not every item applies to every engagement. Use it to make sure you've asked the questions that matter. The checklist is organized around the lifecycle of an engagement: deciding whether to join, joining, participating, and leaving.

1. Before You Join — Should We Engage At All?

The first question is strategic, not legal: why standardize at all? Forum choice and structure are downstream of that answer. If the strategy isn't clear, stop here.

Business Case

  • Who inside the company is championing this? Is there an identified business owner who will remain engaged over the life of the standard?
  • What does the company hope to accomplish — influence the technical direction, track competitive activity, enable a product, signal ecosystem commitment?
  • If the engineering team isn't willing to fund the dues and participation costs, is the engagement worth doing at all?
  • Is there a realistic theory of how participation translates to outcomes the company cares about?
  • What's the exit story if the business rationale goes away?

The Organization

  • What type of organization is it — formal SDO (ISO/IEC, ITU, ETSI), accredited national body (ANSI, INCITS), open consortium, foundation-hosted project, ad hoc group?
  • Is it an incorporated entity or a contractual arrangement? If incorporated, what type (501(c)(6), LLC, foundation) and what jurisdiction?
  • How long has the organization existed? What's its track record?
  • Who else is a member — and what's their level of engagement?
  • Are the organization's governing documents publicly available? Have you read them?

Scope of the Work

  • What specific working group, project, or specification is in scope?
  • Is the scope well-defined, or is it open-ended in a way that invites mission creep?
  • Could membership obligations extend to working groups the company doesn't want to participate in?
  • Are there upstream or downstream dependencies (normative references) that could pull in other IPR regimes?

2. IPR Diligence — The Core Review

Patent Policy

  • What is the IPR regime — RAND, RF, non-assert, something bespoke?
  • If RAND: is FRAND defined? Are defensive suspension and reciprocity provisions in the policy?
  • If RF: is the royalty-free commitment contribution-triggered or participation-triggered?
  • What is the definition of "necessary claims" (or "essential claims")? Is it limited to normative text? Does it cover optional features?
  • Does the commitment extend to transferees of the patents?
  • Is there a defensive termination provision that allows the committing party to withdraw against a party that sues them first?

Disclosure and Exclusion

  • What disclosure obligations exist? Is disclosure based on actual knowledge or constructive knowledge?
  • When does the "call for patents" occur, and what is the exclusion window?
  • What is the exclusion mechanism — can the company carve out specific claims, or is it all-or-nothing at the working group level?
  • What happens if a patent is identified after the exclusion window closes?

Copyright and Trademark

  • What are the copyright rules for contributions and for the final specification?
  • Who owns the specification — the organization, the contributors, or a shared license?
  • Are trademark rights in the specification name, logo, or conformance mark separately licensed?
  • Is there a conformance program, and what are the trademark rules around it?

3. Governance and Participation Rules

  • What are the member classes, and what rights attach to each (voting, board eligibility, working group access)?
  • How are decisions made — consensus, supermajority, simple majority, board approval? At what level of the organization?
  • Are there antitrust guidelines? Are they read at meetings? Is there an antitrust officer or designated chair responsibility?
  • What are the confidentiality obligations? Do they distinguish between organization-internal information and member-contributed information?
  • Are meeting minutes kept? Are they made available to members?
  • Is there a code of conduct, and what is the enforcement mechanism?

4. The Membership Agreement

  • Has counsel reviewed the current version of the membership agreement, bylaws, and IPR policy? (Not just the marketing description.)
  • Are there provisions that bind the company beyond the IPR policy itself — e.g., broad confidentiality, non-disparagement, publicity rights?
  • What is the term, and how does renewal work? Is renewal automatic absent notice?
  • What are the withdrawal provisions — notice period, effective date, consequences?
  • Which obligations survive withdrawal? Patent commitments almost always survive. What else?
  • Is there a governing law and forum provision? Is it acceptable?
  • Are there indemnification or limitation of liability provisions running in either direction?

5. Internal Authorization

  • Who has authority to sign the membership agreement? Does the company's signing matrix cover this type of commitment?
  • Has the engagement been reviewed for conflicts with the patent portfolio — pending litigations, licensing programs, strategic assertions?
  • Has the engagement been reviewed for conflicts with existing products that may read on the developing specification?
  • Is antitrust clearance required (e.g., HSR analysis, or internal competition-law review)?
  • Does the engagement align with the company's open source and open standards policies?
  • Has the relevant IP, business, and engineering leadership signed off?

6. Designating Participants

  • Who will represent the company in the working group? Are they an employee? Are they identified as a company representative or as an individual?
  • Has the participant been briefed on the IPR policy — especially disclosure obligations and exclusion windows?
  • Does the participant have authority to bind the company on technical positions? On procedural votes? On IPR commitments?
  • Does the participant know what they can and cannot say about the company's patents, products, and business plans?
  • Are multiple participants coordinating their positions? Who resolves disagreements?
  • Is there a documented process for the participant to escalate issues to counsel?

7. Ongoing Hygiene

Patent and Contribution Review

  • Is there a process for reviewing contributions before they are submitted — both for IP clearance and for technical fit with the company's strategy?
  • Is there a process for tracking calls for patents and meeting disclosure and exclusion deadlines?
  • Is there a record-keeping process for what the company contributed, when, and under what commitment?

Meetings and Communications

  • Are participants reminded of antitrust guidelines before meetings?
  • Are sensitive topics (pricing, market allocation, boycotts) recognized and avoided?
  • Are side conversations at standards meetings treated with the same discipline as the formal sessions?
  • Are written communications (email lists, chat, issue trackers) governed by the same confidentiality and antitrust rules?

Coordination

  • Is there a regular check-in between counsel, the business lead, and the participants?
  • Are voting positions coordinated with stakeholders before key votes?
  • Are external communications about the standard (press, blog posts, conference talks) reviewed for consistency with the company's positions?

8. When Things Go Wrong

  • Is there a procedural issue (improper voting, inadequate notice, scope expansion) that needs to be raised — and by whom?
  • Is a participant behaving in a way that creates risk for the company or the organization? How is that addressed?
  • Has a third party asserted that a specification infringes their patents? What is the organization's response mechanism, and what is the company's separate position?
  • Has a competition authority or regulator expressed interest in the organization's work? Has counsel been notified?
  • Is the scope of the work drifting in a direction the company can't support? What are the procedural options — objection, abstention, withdrawal from a working group, withdrawal from the organization?

9. Exiting

  • Has the business decision to exit been documented, with a clear rationale?
  • What notice is required, and to whom must it be given?
  • Which commitments survive — patent commitments, confidentiality, copyright licenses, trademark obligations?
  • Is there confidential material that must be returned or destroyed?
  • Are there public-facing statements (website, press) that need to be updated?
  • Has the company's continuing implementation of the standard been evaluated in light of post-withdrawal status — do patent commitments still run in the company's favor as an implementer?

10. A Few Cross-Cutting Reminders

  • When in doubt, read the actual governing documents — not the summary, not the marketing, not the organizational chart. The answer is almost always in the text.
  • Distinguish what the organization requires from what the organization does in practice. Both matter, but for different reasons.
  • Distinguish what the company must do from what the company should do. The legal minimum is not always the right answer.
  • When a question falls outside the range of normal — a term you haven't seen before, a mechanism that operates differently than expected, a pattern of behavior that seems off — slow down and diligence it before you sign.
  • Document your decisions. The reasoning that seems obvious today will not be obvious to your successor three years from now.