Subject: I-D ACTION:draft-ietf-ipr-wg-guidelines-02.txt

From: [email-masked]
Date: Thu, 06 Mar 2003 06:26:43 -0500

A New Internet-Draft is available from the on-line Internet-Drafts directories.
This draft is a work item of the Intellectual Property Rights Working Group of the IETF.

	Title		: Guidelines for Working Groups on Intellectual Property
                          Issues
	Author(s)	: S. Brim
	Filename	: draft-ietf-ipr-wg-guidelines-02.txt
	Pages		: 18
	Date		: 2003-3-5
	
This memo lays out a conceptual framework and rules of thumb useful
for working groups dealing with IPR issues.  It documents specific
examples of how IPR issues have been dealt with in the IETF.

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From: "Bob Wyman" <[email-masked]>
Date: Mon, 10 Mar 2003 12:47:54 -0500

Grumble... I still think that the list in 5.6 should take
explicit notice of the fact that the US and International practice of
publishing patent applications 18 months after filing creates a distinct
and significant increase in the level of awareness of IPR claims 30
months after a method is publicly disclosed. Thus, I would once again
(and for the last time) ask that a second item be placed on the list of
preferences that says:

   o  Technology which has been publicly disclosed for more than
      thirty months, with no known IPR claims.

	It is important, I think, to clarify that the 30 month
anniversary of a disclosure is the first moment at which one can
reasonably begin to rely on searches of patent application databases to
determine if claims have been made. While it isn't definitive, since in
the US some applications aren't published, the 30 month anniversary
significantly increases our ability to discover existing claims made by
those who may not be otherwise obligated to disclose in IETF
proceedings. Thus, I think it would be useful to highlight the
significance of the 30 month anniversary to WG members and chairs.
	Please add the 30 preference to the list...

	bob wyman

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---

From: Scott W Brim <[email-masked]>
Date: Mon, 10 Mar 2003 14:40:42 -0500

I solicit comments from others.

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Mon, 10 Mar 2003 12:30:03 -0800

It is not that simple.  Continuation patent applications are allowed,
under certain circumstances, to be filed later for new claims that have
a supporting basis in the original patent's specifications.  So you can
theoretically be surprised by new claims issued many years after the
first, potentially innocuous, patent is issued or published.  There is
no magic to 30 months.  /Larry Rosen

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On 
> Behalf Of Scott W Brim
> Sent: Monday, March 10, 2003 11:41 AM
> To: [email-masked]
> Subject: Re: I-D ACTION:draft-ietf-ipr-wg-guidelines-02.txt 
> (another plea for 30 month preference)
> 
> 
> > 	Grumble... I still think that the list in 5.6 should 
> take explicit 
> > notice of the fact that the US and International practice of 
> > publishing patent applications 18 months after filing creates a 
> > distinct and significant increase in the level of awareness of IPR 
> > claims 30 months after a method is publicly disclosed. 
> Thus, I would 
> > once again (and for the last time) ask that a second item 
> be placed on 
> > the list of preferences that says:
> > 
> anniversary of 
> > a disclosure is the first moment at which one can 
> reasonably begin to 
> > rely on searches of patent application databases to determine if 
> > claims have been made. While it isn't definitive, since in 
> the US some 
> > applications aren't published, the 30 month anniversary 
> significantly 
> > increases our ability to discover existing claims made by those who 
> > may not be otherwise obligated to disclose in IETF 
> proceedings. Thus, 
> > I think it would be useful to highlight the significance of the 30 
> > month anniversary to WG members and chairs.

---

From: [email-masked] (Bruce Perens)
Date: Mon, 10 Mar 2003 12:35:07 -0800 (PST)

Scott,

In the W3C draft process, there is substantial language concerning
claims that are not yet published.

You can an unpublished patent in process, and it's a trade secret of your
company during that time. In the US, this period may start up to a year
before you even _file_ the patent. If you feel the patent reads on the
standard, you would be required to state that you have a claim and state
its license terms (or lack thereof), but you would not have to disclose
the text or nature of the claim until later in the standards process.
It's expected that you will be able to disclose your claim before the
standard goes to last call.

If your terms are acceptable, you get to keep your patent application
secret for a while and have it incorporated in the standard while the WG
proceeds on incomplete information. I think IETF folks might feel uneasy
about this.

If those terms are not acceptable, or if you opt not to state them
at all, this will indicate an unwillingness on the part of your company
to be a partner in the standards process. It's not clear to me what IETF
would do with this information. It seems to me that such a partial indication
pretty much poisons the WG, in that the WG knows that a patent reading on the
standard, with unacceptable licensing, is present, but the WG has no idea of
its nature.

I have another issue to bring up: The Nature of Assent. We are assuming
that IETF rules are agreed to by a company, by virtue of that company
allowing an employee to participate in IETF process. This is not unlike
a tear-open license on software. We have had recent case law on the nature
of assent, see http://www.nysd.uscourts.gov/courtweb/pdf/D02NYSC/01-07482.PDF .
This case makes me feel that some _more_explicit_ indication of agreement to
the noto bene that we read before meetings may be necessary.

	Thanks

	Bruce

From: Scott W Brim <[email-masked]>
| I solicit comments from others.
| 
| On Mon, Mar 10, 2003 12:47:54PM -0500, Bob Wyman allegedly wrote:
| > 	Grumble... I still think that the list in 5.6 should take
| > explicit notice of the fact that the US and International practice of
| > publishing patent applications 18 months after filing creates a distinct
| > and significant increase in the level of awareness of IPR claims 30
| > months after a method is publicly disclosed. Thus, I would once again
| > (and for the last time) ask that a second item be placed on the list of
| > preferences that says:
| > 
| >    o  Technology which has been publicly disclosed for more than
| >       thirty months, with no known IPR claims.
| > 
| > 	It is important, I think, to clarify that the 30 month
| > anniversary of a disclosure is the first moment at which one can
| > reasonably begin to rely on searches of patent application databases to
| > determine if claims have been made. While it isn't definitive, since in
| > the US some applications aren't published, the 30 month anniversary
| > significantly increases our ability to discover existing claims made by
| > those who may not be otherwise obligated to disclose in IETF
| > proceedings. Thus, I think it would be useful to highlight the
| > significance of the 30 month anniversary to WG members and chairs.
| > 	Please add the 30 preference to the list...
| _______________________________________________
| Ipr-wg mailing list
| [email-masked]
| https://www1.ietf.org/mailman/listinfo/ipr-wg
| 
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---

From: Pekka Savola <[email-masked]>
Date: Mon, 10 Mar 2003 22:49:10 +0200 (EET)

> the noto bene that we read before meetings may be necessary.

This could be established trivially in physical meetings (e.g. when 
registering, requiring to sign the note well statement), but that would 
only offer partial protection, as a lot of contributions are made 
electrically, on mailing lists which do not require subscription.

-- 
Pekka Savola                 "You each name yourselves king, yet the
Netcore Oy                    kingdom bleeds."
Systems. Networks. Security. -- George R.R. Martin: A Clash of Kings

---

From: Bruce Perens <[email-masked]>
Date: Mon, 10 Mar 2003 16:15:19 -0800

Hi Pekka,

I think we're in denial, as a group, on this issue. Most of us are _not_
authorized to make agreements on behalf of our employers. A good many of
us are objecting to any proposed rules that call for such agreements to be
made explicit, because we anticipate that our employers would no longer allow
us to participate in IETF if they were.

So, instead, we're going to have our employers tacitly agree to our
participation in IETF, without signing anything, just by allowing us
to participate in the mailing lists. Forget about the physical meetings,
not everyone goes to them.

When our employers violate the IETF rules, for example by crafting patents
in IETF standards, we will then reveal to them that they are bound by
a contract that they have never signed, because of actions they allowed
us to take.

Doesn't it sound like we're trying to have it both ways? We're trying to
bind our employers to a contract without the burden of actually _asking_
our employers to be bound, because we know they might say no.

One would think that our employers could plausably deny to a court that they
assented to the IETF rules at all. Some of the findings in the Rambus appeal
seems to bear this out.

	Thanks

	Bruce

---

From: "Bob Wyman" <[email-masked]>
Date: Mon, 10 Mar 2003 22:12:25 -0500

Lawrence Rosen wrote:
>There is no magic to 30 months.
	There is a great deal more "magic" to 30 months then there is to
the 12 months currently in the draft. There may be all sorts of things
that can happen long after 30 months, but at least at 30 months, you can
*start* to find published applications. Certainly, there are a number of
circumstances that will result in not all applications being published
by then, but a good number of them will be. On the other hand, at 12
months, you've got no hope of finding out about an application unless
the applicant voluntarily tells you about it. If nothing else, the base
applications that will generate continuations, etc. will become visible
at about 30 months after the idea is first disclosed.
	I realize that continuations can drag on endlessly, for
instance, US Patent 6,314,574 which TechSearch is using to claim all
hypertext links when stored on read-only media was granted in November,
2001 but claims priority back through a series of abandoned applications
that started in 1994... But, had the original 1994 application been
published we could have started to react to it in 1996...
See: http://patft.uspto.gov/netacgi/nph-Parser?patentnumber=6314574
	If we're going to include in the draft the very weak "one year"
time period, then it makes sense that we also include the more
substantive 30 month period.

		bob wyman

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Mon, 10 Mar 2003 19:49:21 -0800

Bob,

I agree with your assessment of the problem and disagree with your
suggestion for solving the problem.  

Disclosure is seldom of value, as many people have said on this list
over the past few weeks.  In the current US patent system, you have
little chance to protect yourself by monitoring published applications
or patents.  There's just too much of a flood of stuff to keep up with,
whether your window is 12 months, or 30 months, or even 20 years wide.  

The only reasonable solution is mandatory licensing by those who
participate in setting the standards, coupled with a refusal to be
blackmailed into paying "reasonable and non-discriminatory royalties" to
third parties when they present an actual encumbrance.

/Larry Rosen

> From: Bob Wyman [mailto:[email-masked]] 
> Sent: Monday, March 10, 2003 7:12 PM
> To: [email-masked]; 'Scott W Brim'; [email-masked]
> Subject: RE: I-D ACTION:draft-ietf-ipr-wg-guidelines-02.txt 
> 	There is a great deal more "magic" to 30 months then 
> there is to the 12 months currently in the draft. There may 
> be all sorts of things that can happen long after 30 months, 
> but at least at 30 months, you can
> *start* to find published applications. Certainly, there are 
> a number of circumstances that will result in not all 
> applications being published by then, but a good number of 
> them will be. On the other hand, at 12 months, you've got no 
> hope of finding out about an application unless the applicant 
> voluntarily tells you about it. If nothing else, the base 
> applications that will generate continuations, etc. will 
> become visible at about 30 months after the idea is first disclosed.
> instance, US Patent 6,314,574 which TechSearch is using to 
> claim all hypertext links when stored on read-only media was 
> granted in November, 2001 but claims priority back through a 
> series of abandoned applications that started in 1994... But, 
> had the original 1994 application been published we could 
> have started to react to it in 1996...
> 	If we're going to include in the draft the very weak 
> "one year" time period, then it makes sense that we also 
> include the more substantive 30 month period.
> 
> 		bob wyman
>

---

From: [email-masked] (Bruce Perens)
Date: Mon, 10 Mar 2003 20:39:24 -0800

> third parties when they present an actual encumbrance.

Yes. The challenge for IETF is to morph itself into a structure that can
assert this sort of requirement.

	Thanks

	Bruce

---

From: Spencer Dawkins <[email-masked]>
Date: Mon, 10 Mar 2003 21:11:40 -0800 (PST)

I know there are IETF-clued enterprises in the world, but my
experience has been that the more an enterprise knows about
other SDOs, the more it is likely to associate participation
with meeting attendance, and the more surprised it will be to
find that an employee has been participating in the IETF based
("merely") on subscriptions to mailing lists.

An attempt to create employer obligations tacitly seems doomed
from the start - at MOST, it's likely to blow back on employees,
without having any impact on the goal we're aiming for.

Spencer

> assented to the IETF rules at all. Some of the findings in the

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---

From: Keith Moore <[email-masked]>
Date: Tue, 11 Mar 2003 00:19:16 -0500

> assert this sort of requirement.

The challenge for IETF is to resist tampering by those who are willing to
compromise IETF's ability to do work, and the quality of IETF's output, for
the sake of a single consideration.

---

From: [email-masked] (Bruce Perens)
Date: Mon, 10 Mar 2003 21:34:48 -0800 (PST)

From: Keith Moore <[email-masked]>
> the sake of a single consideration.

Keith,

Sometimes, single considerations trump all others. You can make
wonderful standards, but who will care when they aren't legal to
implement? That's where we are heading.

	Bruce

---

From: Keith Moore <[email-masked]>
Date: Tue, 11 Mar 2003 00:36:57 -0500

> implement? That's where we are heading.

baseless speculation.

hey the whole world is going to hell, so why should we care about Internet
standards anyway?

---

From: [email-masked] (Bruce Perens)
Date: Mon, 10 Mar 2003 21:56:53 -0800 (PST)

> baseless speculation.

The Rambus case is not speculation. JEDEC did their homework every bit as
well as IETF is _presently_proposing_. The appeals court said that wasn't
sufficient. Three companies are fighting for their lives as a result.

In the face of this, we're proposing a tacit, unsigned, and probably
often uninformed obligation of our employers to an organization that
isn't a legal entity as a means of protecting our standards from exactly
the same practice that happened in JEDEC.

Doesn't this sound less than prudent to you?

	Thanks

	Bruce

---

From: "Bob Wyman" <[email-masked]>
Date: Tue, 11 Mar 2003 03:26:38 -0500

Lawrence E. Rosen wrote:
> The only reasonable solution is mandatory licensing
	This posting, and your numerous other ones like it, make it
clear that you wish the IETF to be something it is not, should not be,
and cannot be. Rather than trying to make the IETF into the image of the
other organizations with which you work, why not focus your efforts on
making the others more of what they are and what you wish them to be? If
the IETF is so hopeless, look for your hope somewhere else.
	If the IETF cannot stand as it is, then it will pass. But, while
it stands, those of us who respect its accomplishments and history would
prefer that it remain true to that history.

> There's just too much of a flood of stuff to keep 
> up with, whether your window is 12 months, or 30 
> months, or even 20 years wide.  
	Rather than giving up in the face of this difficulty, it would
be more in the tradition of the IETF to simply find ways to deal with
it. What we're talking about here is information flows... That's
something that we have some experience with. The IETF and those of us in
this business have been facing severe challenges all of our careers --
we thrive on them. This is not a business for quitters and never has
been. The IETF forum is a place for people who would propose and develop
solutions. Defeat is the mantra of other forums.

		bob wyman

-----Original Message-----
From: [email-masked] [mailto:[email-masked]] On Behalf Of
Lawrence E. Rosen
Sent: Monday, March 10, 2003 10:49 PM
To: [email-masked]; 'Scott W Brim'; [email-masked]
Subject: RE: I-D ACTION:draft-ietf-ipr-wg-guidelines-02.txt (another
plea for 30 month preference)

Bob,

/Larry Rosen

---

From: Brian E Carpenter <[email-masked]>
Date: Tue, 11 Mar 2003 11:58:04 +0100

I can see the sense in mentioning the 30 months timer, in the
spirit of an informational document.

  Brian

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Tue, 11 Mar 2003 12:23:17 +0100

> spirit of an informational document.

and I can see no great benefit in NOT mentioning it (in an informational 
docuemnt), so that makes 3 of us...

Nit:
Bob Wyman said:

> Thus, I would once again

it would be the FIRST item on the list, not the second.

note: the document seems to give no background for the timers involved - if 
someone has two lines of explanatory text that Scott B could include, I 
think that would improve the chance that readers would understand why there 
are 3 different bullets all saying almost the same thing...

               Harald

---

From: Scott Bradner <[email-masked]>
Date: Tue, 11 Mar 2003 07:19:55 -0500 (EST)

> implement? That's where we are heading.

so *every* standard the IETF works on will be not be "legal to
implement"?

that seems to be a rather extreme assertion 

Scott

---

From: [email-masked] (Bruce Perens)
Date: Tue, 11 Mar 2003 07:00:30 -0800 (PST)

From: Scott Bradner <[email-masked]>
> that seems to be a rather extreme assertion 

Look at it this way: can we, with any confidence, positively answer the
question "is this standard legal to implement?" The increasing degree of
patent litigation in the standards space, and of software patent litigation
in general, makes it increasingly likely that the answer is "no" for any
particular implementor. At some point in the near future, that lack of
confidence becomes a business-blocker for any small or medium-sized
enterprise.

Our duty is to improve the confidence level that our standards are legal
to implement as much as possible, using the resources available to us in
reasonable time. This means we start by addressing this in our own rules
and processes. Once we've done as much as we can within the existing
legal framework, I think it's time to go for legislation to resolve the
rest of the problem.

	Thanks

	Bruce

---

From: Keith Moore <[email-masked]>
Date: Tue, 11 Mar 2003 10:10:52 -0500

> question "is this standard legal to implement?" 

no.  but the rules you are pushing for won't do anything to change that,
and they will harm IETF's openness, and its abliity to produce technically 
sound work.

Keith

---

From: Russell Nelson <[email-masked]>
Date: Tue, 11 Mar 2003 10:28:33 -0500

> question "is this standard legal to implement?"

I think this discussion is best left until after we re-charter.  The
consensus seems to be that the three drafts should be published
*first*, then we re-charter.  That way, the people who think that the
documents are important, but that the patent discussion is a waste of
time can get their job done and leave.  It seems clear to me that
changing the IETF's patent policy is not going to be easy, and it
doesn't seem to me like the drafts should be held hostage to that
discussion.

Is that reasonable?  Documents first, then re-charter?

Or are people concerned that once the documents are published, the
door will close on changing the IETF's patent policy?

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From: [email-masked] (Bruce Perens)
Date: Tue, 11 Mar 2003 07:30:57 -0800 (PST)

Keith,

I see a range of harm to IETF's open-ness:

On the left, there is the increasing a lack of confidence that IETF's
standards are open to implement. This causes direct harm to IETF's open-ness.

On the right, we have: A loss of participation caused by an increased
awareness by your employer of the ramifications of IETF participation.
A potential that technical decisions will be effected by patent considerations
and thus depart from the Platonic absolute - but that is already happening.

Our policy should attempt to position us at the point between these two
that maximizes openness.

	Thanks

	Bruce

---

From: Keith Moore <[email-masked]>
Date: Tue, 11 Mar 2003 10:40:18 -0500

> Our policy should attempt to position us at the point between these two

our policy should be to produce the best quality output that we can.
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From: Harald Tveit Alvestrand <[email-masked]>
Date: Tue, 11 Mar 2003 16:56:57 +0100

> Is that reasonable?  Documents first, then re-charter?

I certainly think so.
> door will close on changing the IETF's patent policy?

If the members of this mailing list, and the meeeting in San Francisco, 
both come to a clear consensus that we have discussed the matter enough to 
know that the IETF's patent policy should not be changed, the door is 
certainly closed for a while - until the IETF community clearly shows that 
it has changed its mind.

The second clear outcome is that the members of this mailing list and the 
meeting in San Francisco both show a consensus that the matter should be 
discussed further, at least to the point where new proposals for an IPR 
policy are available for the community to evaluate. Then we obviously 
recharter and continue this WG at least that far.

There are quite a few outcomes between the clear ones; if, a month after 
San Francisco, we are at one of them, we have to evaluate the situation at 
that time.

That's my take.
Now back to your regularly scheduled last-pass-on-nearly-finished-documents 
review.....

                 Harald

---

From: Russell Nelson <[email-masked]>
Date: Tue, 11 Mar 2003 11:20:16 -0500

> our policy should be to produce the best quality output that we can.

Keith, what is the IETF's policy NOW?  That's what this WG should be
concentrating on.  Then, after the drafts are published, this WG
should re-charter and discuss the issues, since they are quite
OBVIOUSLY held near and dear to people's hearts.

Either that, or give up and re-charter now, if you can't hold your
(and I know it's not just you) peace until then.

---

From: "Bob Wyman" <[email-masked]>
Date: Tue, 11 Mar 2003 14:34:36 -0500

Harald Tveit Alvestrand wrote:
> if someone has two lines of explanatory text that 
> Scott B could include, I think that would improve the 
> chance that readers would understand

	"In many jurisdictions that issue patents, inventors are
required to file patent applications within 12 months of public
disclosure or use of a novel method or process. Since many of these
jurisdictions also provide for publication of pending patent
applications 18 months after a patent application is filed, the ability
to determine whether or not claims which encumber the method or process
have been made increases significantly 30 months (12 + 18) after the
public disclosure or use of the particular method or process."

	My apologies for not having produced a masterpiece of modern
literature... But, I think it does the job.

		bob wyman

---

From: Martin Duerst <[email-masked]>
Date: Tue, 11 Mar 2003 19:09:53 -0500

>         "In many jurisdictions that issue patents, inventors are

Is that indeed 'many' juristictions? What about replacing it
with 'some important juristictions'?

Regards,  Martin.

---

From: "Bob Wyman" <[email-masked]>
Date: Tue, 11 Mar 2003 23:09:57 -0500

Martin Duerst wrote:
> Is that indeed 'many' juristictions? What about replacing 
> it with 'some important juristictions'?>
	I had considered words like "major," "important," "significant,"
etc. when writing my proposed text, however, I thought it best not to
suggest wording that might be taken to suggest that some jurisdications
are more or less important or note-worthy than others. Give that the
IETF's audience is international, we must recognize that for each of the
IETF members, the local authority is probably of paramount importance.
To suggest that some jurisdictions are more important than others is
simply not necessary or appropriate in this context.
	I would prefer if whatever wording is used in the draft does not
suggest any ranking of the various jurisdictions.

		bob wyman

---

From: "Bob Wyman" <[email-masked]>
Date: Wed, 12 Mar 2003 17:45:33 -0500

Bruce Perens wrote:
> One would think that our employers could plausably deny 
> to a court that they assented to the IETF rules at all.
	Whether or not the employers assented to IETF rules, wouldn't
the participation of employees in IETF WGs constrain their future
options anyway? What I'm thinking of here is the "Doctrine of Laches"...
Since it is clear that the intent is to implement anything that is the
subject of WG activity then wouldn't participation in the WG be
effective notice, via the employee, to the employer that a large number
of implementers intended, or already had, infringed on an employer's
patent? If this is the case, and the Doctrine of Laches applies, then
the employer would be limited at least in the amount of damages that
could be claimed as a result of the infringements.
	As I understand it, the Doctrine of Laches is based on the idea
that "equity aids the vigilant and not those who procrastinate regarding
their rights." If the employer can be found to have:
	* unreasonably delayed in bringing suit concerning the
infringement
	* caused prejudicial harm to infringers by permitting the delay
(i.e. they spent money and resources building systems that could not be
legally deployed.)
	then the Doctrine of Lache should provide an effective defense
to the infringers. 
	I think the situation of an employee of a patent holder
participating in a WG which was developing a standard would create a
situation much like that in Wanlass v. General Electric Company, in
which the Doctrine of Laches was used as a defense since GE's intent to
use the methods that Wanlass claimed was "open and notorious" and since
employees of Wanlass had been told that GE intended to use the methods.
The IETF process and the RFC's, Internet Drafts, etc. that result are
certainly "open and notorious" and a participant in the process would
become directly aware of other's intent to infringe -- even if they
didn't realize that it was infringement. Given this kind of notice, then
it would seem that one could even argue that the traditional six year
period after which the Doctrine of Laches is presumed to apply would not
be necessary. A much shorter period of time can, and should be argued
for in such standards based proceedings which involve direct
participation from patent holders employees, agents, etc. 
	In essence, I'm suggesting that the Doctrine of Laches would
imply that IPR holders who participate in the IETF must disclose their
claims to the IETF *whether or not* the IETF has an explicit policy on
the subject of disclosure... If such disclosures are not made, then
infringers would be able to use the Doctrine of Laches as a defense.
	Can the lawyers of the group give me some idea if there is
anything worthwhile in the above?

		bob wyman

---

From: "'Bruce Perens'" <[email-masked]>
Date: Wed, 12 Mar 2003 23:14:31 +0000

> What I'm thinking of here is the "Doctrine of Laches"...

Here's my non-attorney understanding of this.

It takes 6 years delay for Laches to be a permissible defense.

Postulate that an employee participates in IETF without authorization,
and becomes aware of an infringement but does not communicate that
infringement to management. Is the employer delaying prosecution? Should
the employer have been aware of the infringement? If the answer is to
these is "no", Laches would fail as a defense.

	Thanks

	Bruce

---

From: "Bob Wyman" <[email-masked]>
Date: Wed, 12 Mar 2003 18:33:25 -0500

>It takes 6 years delay for Laches to be a permissible defense.
	I am aware that "courts have generally considered six years as
the applicable time frame for a presumption of laches to arise."
However, "Any period of time may be found to amount to unreasonable
delay, depending on the facts present, although shorter delays are less
likely to trigger the defense." The quoted text comes from:
http://www.converium.com/web/converium/converium.nsf/articles/5731FF9F43
72B6ED85256B43006EA07D?OpenDocument
	Note: I am not suggesting that the Doctrine of Laches would
apply in all cases, however, it seems to me that it would apply in at
least some. Some is better than none... "Some" also provides a
foot-in-the-door opportunity to build arguments or precedent that would
expand the application to "more than some" or maybe "all"...

		bob wyman

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Wed, 12 Mar 2003 15:52:59 -0800

Laches is an equitable doctrine.  Courts are generally reluctant to find
laches except as a last resort and when there is clear evidence of a
party consciously sitting on its rights without taking action.  It is a
thin reed to which to cling when the flood waters arrive.

/Larry Rosen

> Sent: Wednesday, March 12, 2003 2:46 PM
> To: [email-masked]; 'Bruce Perens'
> Cc: 'Contreras, Jorge'; [email-masked]
> Subject: RE: The nature of assent
> 
> 
> Bruce Perens wrote:
> 	Whether or not the employers assented to IETF rules, 
> wouldn't the participation of employees in IETF WGs constrain 
> their future options anyway? What I'm thinking of here is the 
> "Doctrine of Laches"... Since it is clear that the intent is 
> to implement anything that is the subject of WG activity then 
> wouldn't participation in the WG be effective notice, via the 
> employee, to the employer that a large number of implementers 
> intended, or already had, infringed on an employer's patent? 
> If this is the case, and the Doctrine of Laches applies, then 
> the employer would be limited at least in the amount of 
> damages that could be claimed as a result of the infringements.
> 	As I understand it, the Doctrine of Laches is based on 
> the idea that "equity aids the vigilant and not those who 
> procrastinate regarding their rights." If the employer can be 
> found to have:
> 	* caused prejudicial harm to infringers by permitting 
> the delay (i.e. they spent money and resources building 
> systems that could not be legally deployed.)
> 	then the Doctrine of Lache should provide an effective 
> defense to the infringers. 
> participating in a WG which was developing a standard would 
> create a situation much like that in Wanlass v. General 
> Electric Company, in which the Doctrine of Laches was used as 
> a defense since GE's intent to use the methods that Wanlass 
> claimed was "open and notorious" and since employees of 
> Wanlass had been told that GE intended to use the methods. 
> The IETF process and the RFC's, Internet Drafts, etc. that 
> result are certainly "open and notorious" and a participant 
> in the process would become directly aware of other's intent 
> to infringe -- even if they didn't realize that it was 
> infringement. Given this kind of notice, then it would seem 
> that one could even argue that the traditional six year 
> period after which the Doctrine of Laches is presumed to 
> apply would not be necessary. A much shorter period of time 
> can, and should be argued for in such standards based 
> proceedings which involve direct participation from patent 
> holders employees, agents, etc. 
> 	In essence, I'm suggesting that the Doctrine of Laches 
> would imply that IPR holders who participate in the IETF must 
> disclose their claims to the IETF *whether or not* the IETF 
> has an explicit policy on the subject of disclosure... If 
> such disclosures are not made, then infringers would be able 
> to use the Doctrine of Laches as a defense.
> 	Can the lawyers of the group give me some idea if there 
> is anything worthwhile in the above?
> 
> 		bob wyman
>

---

From: Martin Duerst <[email-masked]>
Date: Wed, 12 Mar 2003 19:06:36 -0500

Hello Bob,

I thought about your point, too. I don't exactly like the word
'important'. But on the other hand, I don't think 'many', because
my understanding is that there are not that many at all
(who else besides the US?). But just saying 'In some juristictions'
may downgrade the issue too much.

Regards,    Martin.

---

From: "Bob Wyman" <[email-masked]>
Date: Wed, 12 Mar 2003 20:01:30 -0500

Martin Duerst wrote:
> my understanding is that there are not 
> that many at all (who else besides the US?).
	Actually, the United States was very late in adopting the
practice of publishing applications 18 months after filing. This was
done in the US in large part to "harmonize" with the common
international practice.

		bob wyman

---

From: Martin Duerst <[email-masked]>
Date: Thu, 13 Mar 2003 10:24:55 -0500

Okay, then I got it wrong, sorry.     Regards,   Martin.

---

From: Scott W Brim <[email-masked]>
Date: Thu, 13 Mar 2003 13:55:14 -0500

> 	Please add the 30 preference to the list...

I'm back, I've been thinking about it, and I don't think the 12/18/30
month events do you much good after all.

   o  Technology which has been publicly disclosed for more than one
      year, with no known IPR claims.

This isn't much help, because it's hard to know of IPR claims which have
not been made known to you.  You can know that the people who disclosed
it (by whatever means) don't know of any claims, but that's all.
Searching for a patent when you don't know the inventor is hard.  The 12
month timer is useful when a technology has been discussed in the IETF
by the IPR asserter.  In that case, the IPR asserter has to file within
a year, and has to file an IETF disclosure soon after doing that.
However, that's circular -- at the point where this discussion matters,
the technology has only started to be discussed in the IETF.  12 months
later doesn't help.

30 months is useful if the patent has been applied for outside of the
USA, but again you would have to monitor every publication, or else be
able to search for technology patents without knowing the inventor.  

So I'm hesitant to put this category at the top of the list.  I now
believe that explicit publication and explicit licensing terms will
always be better than this kind of implicit inference through lack of
evidence.

   o  Technology which has been publicly disclosed, with no known IPR
      claims.

This was meant to be a less preferable superset of the first, and thus
it's even less help.

We could put in a category where technology has been explicitly placed
in the public domain.

   o  IPR disclosed and licensed with no restrictions.

This is good.  So are the rest, where IPR claims and licenses are
explicitly known.

So I propose we get rid of the top two categories, and add one for IPR
explicitly placed in the public domain, at the top.

..swb

---

From: "Bob Wyman" <[email-masked]>
Date: Thu, 13 Mar 2003 15:23:56 -0500

Scott Brim wrote:
> I now believe that explicit publication and explicit 
> licensing terms will always be better than this kind 
> of implicit inference through lack of evidence.
	It cannot be argued that explicit terms will *always* be better.
However, in many cases they simply can't be obtained if only because
nobody is making claims for which terms can be provided! "Inference
through lack of evidence" will always be necessary. The point about the
12/18/30 month time periods is simply to give people some guidance in
determining when "lack of evidence" should be relied upon.

> 30 months is useful if the patent has been applied 
> for outside of the USA, but again you would have to 
> monitor every publication, or else be able to search 
> for technology patents without knowing the inventor. 
	Patent and application search applications are provided by all
major patent offices and are really pretty easy to use. Admittedly, a
search can miss items, however, the technology is there and frankly, I
think that in today's climate, folk should get used to the idea that
they have to do searches from time to time to prevent dragging us all
down paths that are going to be blocked by IP claims. The point of the
30 month period is that at that point, you can assume that a large
percentage of applications *will be* available via that patent office
search engines. Being able to make the searches is better than simply
relying on personal knowledge or rumours fed through friends and
acquaintances.

> So I propose we get rid of the top two categories, 
> and add one for IPR explicitly placed in the 
> public domain, at the top.
	If the document's language is to have any legal meaning, you
can't refer to things being "placed in the public domain." There is no
mechanism to "place things in the public domain" in most cases. With
both copyright and patents, even if someone writes a document saying
that "anyone can use this" that document is still just a license for a
protected thing -- even if it is a liberal license, the subject matter
still isn't "public domain.". And, there are all sorts of ways that such
licenses can be revoked at a later date. (Note: there is a little used
procedure in the US Patent system that allows a patent holder to deny
their rights in a patent, however, its use is so limited that it is
hardly worth mentioning.)
	The list in the ID is supposed to provide a number of increasing
levels of assurance that a method is unencumbered. Thus, it seems
natural that the "lowest level" items (first on the list) would provide
less assurance than the later items which provide higher levels of
assurance. Your suggestion that the timing related items should be
eliminated because they can't provide high levels of assurance would
seem to be a rejection of the whole idea of having an ordered list of
assurance levels. Explicit publication and terms will always be better,
however, hints of implicit abandonment of claims is still better than
nothing.
	I would also like to suggest, as others have, that adding the
admittedly weak indicators which are date based will do no harm in this
context. Given that they do no harm, and can provide at least a minor
benefit, why not include them?

		bob wyman

-----Original Message-----
From: [email-masked] [mailto:[email-masked]] On Behalf Of
Scott W Brim
Sent: Thursday, March 13, 2003 1:55 PM
To: [email-masked]
Subject: Re: I-D ACTION:draft-ietf-ipr-wg-guidelines-02.txt (another
plea for 30 month preference)

> 	Grumble... I still think that the list in 5.6 should take
explicit 
> claims 30 months after a method is publicly disclosed. Thus, I would 
> once again (and for the last time) ask that a second item be placed on

anniversary of 
> a disclosure is the first moment at which one can reasonably begin to 
> claims have been made. While it isn't definitive, since in the US some

> applications aren't published, the 30 month anniversary significantly 
> may not be otherwise obligated to disclose in IETF proceedings. Thus, 

..swb

---

From: Brian E Carpenter <[email-masked]>
Date: Fri, 14 Mar 2003 13:37:09 +0100

Bob Wyman wrote:
...
> If the document's language is to have any legal meaning,

It isn't. It's a guidelines document.

  Brian

---

From: Brian E Carpenter <[email-masked]>
Date: Fri, 14 Mar 2003 13:41:19 +0100

We not writing rules here, we're writing guidelines. So I think
documenting the 12/18/30 month timers is useful. Building them into
criteria isn't.

   Brian

-- 
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
Brian E Carpenter 
Distinguished Engineer, Internet Standards & Technology, IBM 
On assignment at the IBM Zurich Laboratory, Switzerland
_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: Scott W Brim <[email-masked]>
Date: Fri, 14 Mar 2003 11:57:20 -0500

> documenting the 12/18/30 month timers is useful. Building them into

Yes, documenting them is a good idea.  We already have a strawman
paragraph for that.  I'm just hesitant to place them in an ordered list
of IPR scenarios, since I have trouble seeing that they do us much good.
Anyway, yes, definitely a paragraph.  We can polish that by mail.
Response to Bob coming soon.

..Scott

---

From: Scott W Brim <[email-masked]>
Date: Fri, 14 Mar 2003 13:23:46 -0500

> determining when "lack of evidence" should be relied upon.

I can do that.  Since it's orthogonal to the licensing terms in all of
the other bullets, I suggest a separate paragraph.

> relying on personal knowledge or rumours fed through friends and

Agreed.  I use them.  But, suppose you're working on "secure remote
passwords".  How do you search to see if there are any related patents?
If you don't know the inventor or company you could wander in the
wilderness for 40 years.  Yes, we should have text about searches, and
about how searches get easier at 12/18/30 months, but can we really say
"technology which has no known claims after 30 months is preferred to
technology which is licensed royalty-free"?  You know what I think. :-)

> hardly worth mentioning.)

OK, I withdraw that suggestion.

> assurance. 

Except that "disclosed and licensed with no restrictions" is a huge leap
in assurance from the timing-related ones.  In order to include the
timing ones, you would have to say "these are good, but you can't have
any certainty".  I don't know how to put this all together in one list.
I prefer a separate paragraph.  

> Your suggestion that the timing related items should be

True.

> benefit, why not include them?

Sure thing, but in a separate paragraph?

..Scott