Subject: FW: can you chime in on this one?

From: "Contreras, Jorge" <[email-masked]>
Date: Thu, 14 Aug 2003 21:47:08 -0400

>From [email-masked]  Thu Aug 14 17:15:14 2003
To: Scott Bradner <[email-masked]>
cc: [email-masked]
Subject: Re: -technology - blanket RF statments 
In-Reply-To: Message from [email-masked]
   of "Fri, 01 Aug 2003 00:06:04 EDT." <[email-masked]> 
Date: Thu, 14 Aug 2003 17:10:37 -0400
From: Thomas Narten <[email-masked]>

Scott  Bradner <[email-masked]> writes:

> thomas asks:
> > > 6.4.3  The requirement for an IPR disclosure is not satisfied by the
> > >    submission of a blanket statement of possible IPR on every
> > >    Contribution.  This is the case because the aim of the disclosure
> > >    requirement is to provide information about specific IPR against
> > >    specific technology under discussion in the IETF.  The requirement is
> > >    also not satisfied by a blanket statement of willingness to license
> > >    all potential IPR under fair and non-discriminatory terms for the
> > >    same reason.  However, the requirement for an IPR disclosure is
> > >    satisfied by a blanket statement of the IPR discloser's willingness
> > >    to license all of its potential IPR meeting the requirements of
> > >    Section 6.6 (and either Section 6.1.1 or 6.1.2) to implementers of an
> > >    IETF specification on a royalty-free basis and other reasonable and
> > >    non- discriminatory terms.
> > 
> > The text after the "however" struck be as odd when I first read it.
> > 
> > I assume the last sentence is intended to mean, if one is willing to
> > license royalty-free, a blanket statement to that effect is sufficient
> > and that such an IPR holder is no longer under any obligation to
> > disclose which technology any IPR applies to. Is this the correct
> > intent?

> not quite - it actually is trying to say that in most cases blanket
> statements about IPR should not be used but that blanket statements
> that say "everything is RF" are ok -

To be clear, I have always understood the "Generic IPR Notices" on the
IPR web pages to be FYI type statements, that allow a company to state
what their general terms are. However, they are mostly Good Will
statements, because in the case that specific IPR exists with regards
to some technology, a specific disclosure statement needs to be filed
anyway. But given a generic statement, one could make a very good
guess as to what the licensing terms of any disclosure would be, which
is certainly useful.  However, those statements have never been
"sufficient" disclosure by themselves and "do not satisfy" the
requirements for disclosure as listed above.

What I worry about (and I'm not a lawyer), is that the language in the
document says that a generic statement saying someone will grant
royalty free licenses satisfies the obligation to disclose, and no
specific disclosures on a per technology/patent basis are needed. I'd
be fine with that, if I understood what royalty free _really_
means. The document uses the words:

>    However, the requirement for an IPR disclosure is
>    satisfied by a blanket statement of the IPR discloser's willingness
>    to license all of its potential IPR meeting the requirements of
>    Section 6.6 (and either Section 6.1.1 or 6.1.2) to implementers of an
>    IETF specification on a royalty-free basis and other reasonable and
>    non- discriminatory terms.

The wording "and other reasonable and non-discriminatory terms" seems
like it could add some caveats to "royalty-free". If folk can give me
assurances that the wording does not add hidden caveats or other
considerations that a WG would want to consider, I'm fine with the
current wording. Otherwise, I worry that allowing folk to not disclose
adds a potential loophole to the disclosure rules that might turn out
to hurt down the road. (Note: I suspect that this is a question for
the lawyers, and I am also attempting to get this answered offline,
but have not been able to yet.)

> I guess that could be read to say that someone issuing such a
> blanlet stament does not have to do anything more but I do not see
> anything wrong with that reading

If I was confident that there is a shared understanding of what
the term "royalty-free" meant, I'd agree.

Thomas

JLC> I think that "royalty-free" is pretty self-explanatory.  Originally,
the requirement was just that RF be promised.  However, we added 
"and other reasonable and non-discriminatory terms" so that the IPR owner
could not have a RF license that was otherwise unreasonable (e.g., the
license is royalty-free, but the licensee must do everything standing
on his head.)  I suspect that "other" reasonable terms might include
reciprocity of licensing (i.e., the licensee should not sue the licensor
on its own patents covering the standard).  There are probably many other
reasonable terms that could be included in an RF license - too many to list.
Since RF is the most important feature here, we required that it be promised
explicitly.  The other terms can be left to a "reasonableness" test, unless you
think there are some definite must-haves or must-not-haves, which we could
specific explicitly too.

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---

From: Thomas Narten <[email-masked]>
Date: Fri, 15 Aug 2003 16:25:55 -0400

"Contreras, Jorge" <[email-masked]> writes:

> JLC> I think that "royalty-free" is pretty self-explanatory.

Agreed.

> Originally, the requirement was just that RF be promised.  However,
> we added "and other reasonable and non-discriminatory terms" so that
> the IPR owner could not have a RF license that was otherwise
> unreasonable (e.g., the license is royalty-free, but the licensee
> must do everything standing on his head.)

I also support this. This is what I expected the intention to be.

> I suspect that "other" reasonable terms might include reciprocity of
> licensing (i.e., the licensee should not sue the licensor on its own
> patents covering the standard).  There are probably many other

I think these are fine too.

> Since RF is the most important feature here, we required
> that it be promised explicitly.  The other terms can be left to a
> "reasonableness" test, unless you think there are some definite
> must-haves or must-not-haves, which we could specific explicitly
> too.

Here's my concern. It seems like "and other reasonable and
non-discriminatory terms" is something that different folk can and
will argue about. What is reasonable for one person may not be
reasonable for someone else. 

If a "blanket statement" is required to also list those other
reasonable and non-discriminatory terms, so that folk can see what
they are, that would help with the issue I think. Is this the intent?
(I don't recall any specific words requiring this.)

Also, suppose that someone does issue a blanket statement - with some
associated terms, but there is disagreement in the community as to the
"reasonableness" of the terms. At this point, one can read the
document as saying the IPR holder is not required to disclose specific
IPR (because of the blanket statement), yet the spirit of the
disclosure rules has been violated in the sense that there are folk
that think IPR needs to be disclosed (so a WG can decide whether to
use the technology), but the IPR holder believes they do not have to.
This is a hard issue because there is no clear process through which
this dispute could be resolved.

I sure hope this isn't an issue in practice, in the sense that this is
most likely an issue only if it involves bad intent with the IPR
holder. On the other hand, those conditions are where we don't want
unclear language that is exploitable.

Note: I think the issue goes away completely if the IPR holder is
required to disclose IPR associated with specific technology just like
other IPR holders. I don't have a good idea how to (easily) fix the
issue in other ways.

So one question is how strongly the community feels that a royalty
free blanket statement should allow dispensing with per-technology
disclosures, and how important it is for vendors with royaly-free
policies to be able to skip making specific disclosures.

Thomas

---

From: Scott Bradner <[email-masked]>
Date: Fri, 15 Aug 2003 16:46:16 -0400 (EDT)

can you suggest words to clarify what Jorge says is meant here
(i.e. that the terms are "royalty-free") - my 1st cut at this did not
include the other words but they were suggetsed on the list

> policies to be able to skip making specific disclosures.

I think it's pointless, silly and counterproductive to ask someone 
who has made a clear stament that they will give away any and all IPR 
to then spend the time and effort to detail where the IPR they will 
give away impacts IETF work.  It seems to me that this would be a 
good way to discourage people from giving away the IPR.

If they agree to give it away, there is no related IPR issue for the working
group  to deal with (at least from this IPR owner) so why is there
a need to ask them to do the work?

Scott