Since 1988, Gesmer Updegrove LLP has represented over 200 standards consortia, accredited standards development organizations, open source software foundations, open data projects, and open science foundations (collectively, “consortia”), in most cases from the planning stage. We also advise major corporations, universities, government agencies, and others in connection with consortium participation strategies, and provide standards-related litigation, expert witness, and dispute resolution services.
Quite simply, we believe that we are the most experienced law firm in this area of practice. A complete list of our consortium clients appears below. For further information, contact Andrew Updegrove at andrew.updegrove@gesmer.com, or by telephone at 617-350-6800.
I. Areas of Expertise. Our full service firm provides all of the areas of legal and advisory services that consortia and foundations need to succeed.
- Consulting: We provide strategic and business, as well as legal advice, to help our clients structure and manage organizations that are designed to succeed.
Examples:- Designing appropriate membership classes and defining industry-appropriate membership fees to attract all necessary categories of participants
- Developing appropriate budgets, staffing models, and Board and management structures
- Designing and deploying certification and branding programs to build public awareness and end user confidence in consortium standards
- Facilitating retreats to restructure or retarget existing consortia to address new market challenges and opportunities
- Acting as “best practices” resource in all areas of consortium formation and operation (see, e.g., the ConsortiumInfo.org Essential Guide to Standards)
- Intellectual Property Rights (“IPR”): We provide a wide variety of services in the IPR area, addressing all of the needs of our consortium clients.
- IPR Policies: All consortia need clear IPR rules and procedures suitable for their activities, as well as ongoing attention to the application of these rules in the trenches. We assist in all aspects of this process, including:
- Creating practical and effective IPR policies that reflect the norms of the industries in which our consortium clients operate, from RAND-Fee to RAND-Free
- Drafting technical process documents to ensure effective IPR management and smooth operations
- Helping resolve IPR-related disputes among members, and between members and third parties, as they arise
- In all of these activities, we help our clients balance member concerns relating to their IPR with the common goal of avoiding downstream IPR “surprises.”
- Trademark: All of our consortium clients require some level of trademark assistance, including some or all of the following:
- Designing cost-effective, global trademark, service mark and/or certification registration programs
- Registering and managing global portfolios of marks, and defending marks against infringers
- Designing and implementing certification and branding programs
- Patent: While it almost never makes sense for consortia to register patents, patent issues often arise that require legal review. We help our consortium clients by:
- Advising how to deal with infringement allegations involving in-process and already adopted standards
- Securing and using patent opinions when needed on a defensive basis
- Acting as expert witnesses in standards-related patent litigation
- Licensing: Active consortia receive technology and make it available on a regular basis. We cover all aspects of such technology transfers, including:
- Providing user-friendly “clickwrap” licenses for all normal usages of consortium work product (e.g., standards, test suites, trademarks and certification marks)
- Documenting contributions of technology by members and third parties in such a way as to ensure easy of use and absence of potential liabilities
- For our open source clients, selecting appropriate licenses for work product, and drafting matching contribution and other agreements
- Tax: We provide ongoing tax services, including:
- Qualifying our clients as tax-exempt trade associations, charities and foundations, as best suits their business goals
- Monitoring and advising our clients on an ongoing basis to protect their tax status
- Creating tax-exempt and taxable subsidiaries and affiliates as needed to achieve evolving goals
- Antitrust: By their nature, consortia bring competitors together to achieve common purposes. While regulators respect the “pro-competitive” effects that consortia can have, we provide real-time advice to our clients to ensure that they do not inadvertently violate applicable laws. Examples:
- Assisting in the filing of registrations and updates under the National Cooperative Research and Production Act
- Attending Board meetings, either in-person or by telephone, or (where budgets are more limited) reviewing board minutes before they are distributed
- Providing appropriate Board and Member antitrust policies and advisory memoranda
- Coaching management and chairpersons on activities and topics to avoid
- We also follow emerging antitrust law and trends on an ongoing basis, and meet with regulators to exchange current industry information in support of standards development.
- External relationships: Consortia frequently enter into variously formal and informal relationships with other organizations. We assist them by drafting appropriate agreements including:
- Memoranda of Understanding with other standards organizations
- Agreements to submit standards for endorsement or adoption by ISO, IEC, etc.
- Trade conference, hotel, and other third party commercial agreements
- Staffing: Whether our clients have dedicated staff or use service companies, we assist by:
- Determining market salary and benefit packages, and drafting employment offers and separation agreements
- Negotiating service agreements with service companies for the provision of administrative and other services
- Documenting appropriate benefits packages
- International: Almost all of our consortium clients operate on a global basis. Common ways in which we assist our clients abroad include:
- Avoiding appearances of “US Centricity” in order to ensure global participation and credibility
- Managing trademark portfolios through trusted partners around the world
- Creating international subsidiaries and offices as needed to meet national and regional needs
- Coordination and Networking: Over the more than two decades we have been representing our consortium clients, we have developed a global network of persons of influence and ability. We share these contacts with our clients in many ways, including by:
- Introducing our clients to certification labs, test suite developers, hosting companies, merger partners, and others
- Locating suitable candidates to fill management positions
- Transactional: We have represented our consortium clients in many mergers, acquisitions and joint ventures with other standards and promotional bodies. At any time, we are typically involved in one or more consortium mergers, or the evaluation of merger opportunities. Our services in this area include:
- Evaluating when it is time to discontinue independent existence and seek a merger partner
- Structuring transfers of assets to successor organizations in a cost-effective manner to minimize time and cash expenditures
- Negotiating favorable terms for members to participate in successor organizations
II. Costs. The great depth and breadth of our experience allows us to provide our services on a highly cost-effective basis. Our high value to cost service model is made possible in part by:
- Using the many easily customized templates that we have developed over time to serve all common consortium needs, from formation, through operations, to eventual dissolution and/or merger
- Maintaining hourly rates below those of other law firms with comparable sophistication
- The familiarity that the legal departments of virtually all major technology corporations have developed over the years with our document templates by becoming members of the many consortia we represent
- Our pragmatic approach to legal representation, which is intended to give the client what it wants and needs at a cost it can afford
III. Industry Involvement and Commitment. Our commitment to best practices and the vitality of the standard setting infrastructure is unmatched, as demonstrated by the thousands of hours of efforts expended by the head of our consortium practice, Andrew Updegrove, including:
- Drafting and filing pro bono “friend of the court” (amicus curiae) briefs in important standards litigation in the federal District, Circuit, and Supreme Court and before the Federal Trade Commission on behalf of dozens of consortia
- Providing invited testimony at joint Department of Justice and Federal Trade Commission hearings on intellectual property and standard setting
- Testifying before a Congressional subcommittee in support of the role of NIST in standards development
- Participating as the sole representative of the consortium community on the committee chartered to revise the United States Standards Strategy
- Serving on the Boards of Directors of the American National Standards Institute (ANSI), Free Standards Group and Linux Foundation, and on the Boards of Advisors of HL7 and Open Software for America
- Creating ConsortiumInfo.org, a free, public resource that serves over 1 million page views per month with multiple features, including the largest on-line: library of standards literature, archive of standards related news articles, and directory of consortia
- Publishing Standards Today, a free eJournal of standards-related news, ideas and analysis received by over 7,000 subscribers, now in its 60th issue (Updegrove received the 2005 President’s Award for Journalism from ANSI in recognition of his writing)
- We invite you to learn more about our consortium, standards and open source practice by visiting the consortium practice page at our firm website, or by contacting Andrew Updegrove at 617/350-6800, or andrew.updegrove@gesmer.com