ASTM Legal Module ASTM Headquarters September 20-21, 2016 Tom O’Brien – ASTM General Counsel

Discussion Topics Antitrust IP Issues Use of ASTM Standards

Antitrust Issues ASTM Reg. 19 Issues ASTM has faced Guidance

Major Antitrust Laws Sherman Antitrust Act (1890) every contract, combination, or conspiracy to restrain trade (or monopolize) is illegal Clayton Antitrust Act (1914) prohibits certain restrictive business practices that “substantially lessen competition” Federal Trade Commission Act (1914) prohibits unfair or deceptive methods of “competition”

Antitrust Policy Antitrust policy seeks to: limit market domination (monopoly power) curb practices that restrict competition Practices subject to antitrust action: collusive agreements among firms exclusive dealings predatory behavior by firms other anticompetitive practices used by firms with market power

Common sense guidelines Do not discuss prices with competitors (price-fixing). Do not agree with a competitor to stay out of a certain market. Do not join forces with some competitors to disadvantage others Do not price fix with competitors Do not tie the sale of one product to another.

ASTM Experience Four lawsuits – ASTM named as a Party Five lawsuits between members or involving members

It’s the Process! Voting Interests Balance Inclusion, not exclusion Handling of Negative Votes Patents Running Efficient Meeting Contact staff manager/me

Patents Reg. 15: Preference for Generic Standard w/o Patents Committee determines if Patent necessary for inclusion Final standard must include FN asking for alternatives Committee must promptly consider alternatives

Intellectual Property: Policy and Procedures Who can Copyright? Author Employer (Work-for-Hire) Assignee What are the rights protected? Reproduction Derivative Works Distribution/Sale

Intellectual Property: Policy and Procedures How does ASTM acquire ownership/copyright? By assignment Membership Application “You agree, by your participation in ASTM…to have transferred and assigned any and all interest you possess or may possess, including copyright, in the development of ASTM standards or ASTM IP to ASTM.”

Intellectual Property Policy By participating in any ASTM International technical committee and/or participating in the creation, development and/or adoption of ASTM IP, participants and committee members acknowledge that the copyright to such IP resides in ASTM. Each ASTM member . . . transfer[s] any and all ownership interest, including copyright . . . to ASTM. If requested, you agree to execute any and all additional documents necessary and appropriate to transfer and effectuate ownership of such rights…

Right From The Beginning When does a standard/draft become ASTM IP? Right From The Beginning

Working Document Caveats Use: Ballot Items – New Standards This draft document is not an ASTM International standard; it is under consideration within an ASTM International technical committee but has not received all approvals required to become an ASTM International standard. It shall not be reproduced or circulated or quoted, in whole or part, outside of ASTM International Committee activities except with the approval of the Chairman of the Committee having jurisdiction and the President of the Society. Copyright ASTM International, 100 Barr Harbor Drive, West Conshohocken, PA 19428. All rights reserved.

Working Document Caveats Use: Ballot Items – Revisions This standard is under consideration for revision within an ASTM International technical committee. The revisions proposed have not received all approvals required to become an ASTM International standard. It shall not be reproduced or circulated or quoted, in whole or part, outside of ASTM International Committee activities except with the approval of the Chairman of the Committee having jurisdiction and the President of the Society. Copyright ASTM International, 100 Barr Harbor Drive, West Conshohocken, PA 19428. All rights reserved.

Trademarks ASTM Logo Policy: Cannot be used to signify or imply approval or certification by ASTM of Business, Product or Services F & S F.4.2 Trademarks

Research Reports On the Research Report: This ASTM International Research Report contains proprietary information and/or data generated from conducting an ASTM Test Method. The purpose of this information is solely to validate the ASTM Test Method. The data and analyses may not be reproduced, circulated or quoted, in whole or part, without written permission from ASTM International. Copyright ASTM International, 100 Barr Harbor Drive, West Conshohocken, PA 19428. All rights reserved.

Joint Standards Development Means Sharing IP If ASTM IP, must follow ASTM Practice

If Another SDO’s IP need to follow: ASTM Procedure: ASTM IP Policy: Staff should obtain written permission from other organization Other Organization’s Procedure(s) – if any

Current Lawsuit ASTM, et al v. PublicResource.org 21 September 2018

Legal System’s Use of Standards

Contract: Compliance with Terms Negligence: Proof/Evidence of Standard of Care Product Liability: Proof/Evidence of a Defect

Standard of Care: “…that degree of care which a reasonably prudent person should exercise under same or similar circumstances.”

Product Defect: Existence of a defective condition that makes a product unreasonably dangerous to the user or consumer

Contract Intent of Parties Standard Referenced Non-Conformity is a Breach

Negligence Evidence of Standard of Care Need for Expert Testimony Adopted by Trade Association Evidence of Industry Standard Adopted by Fed/State Agency Proof of Standard of Care

Products/Strict Liability: Compliance is evidence that product is not defective Expert Testimony: On “strength” of standard/SDO Process to establish If adopted by government, may end the issue

Standards provide a basis for (non-scientific/technical) judges to make scientific/technical decisions.

Daubert: Judges must evaluate proffered expert testimony for relevancy and reliability Reliability Considerations: Repeatability/Testability Peer Reviewed/Published Existence of Standards/Error Rate Generally Accepted by Scientific Community

Changes to Standards: What Impact? Standard is evidence/proof of standard of care at a Point in Time Standard of Care can be an evolving concept Depends on why standard changed and info available when first adopted Inquiry into process Was problem discussed when first adopted

Questions? Thomas B. O'Brien Jr. Vice President & General Counsel ASTM International 100 Barr Harbor Drive West Conshohocken, PA 19428-2959 1-610-832-9597 1-610-832-9599 (fax) tobrien@astm.org

THANK YOU FOR YOUR ATTENTION!