Subject: RE: Issue found in RFC 3667 text

From: "Contreras, Jorge" <[email-masked]>
Date: Wed, 28 Apr 2004 07:49:20 -0400

I agree that the 'race condition' is a bug in the 3667 legend language.  Making it consistent with 3668 would be more accurate.

As far as the second issue raised by Fred, that was an intentional feature.  If a patent application has not been published and the applicant wishes to maintain the confidentiality of its contents, then he/she should not submit an ID covered by the application's claims unless willing to disclose enough to satisfy the 3668 requirements.

-----Original Message-----
From: [email-masked] [mailto:[email-masked]]On Behalf Of
[email-masked]
Sent: Wednesday, April 28, 2004 2:50 AM
To: [email-masked]
Cc: [email-masked]; [email-masked]
Subject: Issue found in RFC 3667 text

Robert Barr and I were discussing, and concluded that there is an error
in the language required by section 5.1 of RFC 3667. Consider the
text:

   "By submitting this Internet-Draft, I certify that any applicable
    patent or other IPR claims of which I am aware have been disclosed,
    and any of which I become aware will be disclosed, in accordance
    with RFC 3668."

I cannot file an IPR notice without a posted draft to file it
concerning, and this statement says that at the time I post it I have
already revealed all IPR known to me. In communication protocol design,
we refer to this as a "race condition."

There is also another issue with it; IPR is generally not granted for
years after filing, the contents of the filing are confidential, and
one doesn't know what subset of the claims in the filing will be
granted. So this, I believe, requires me to not file an internet draft
describing any algorithms concerning which I may have filed for IPR
claims until those claims have been granted or denied and I can talk
about my IPR.

The claim is also inconsistent with RFC 3668, which states:

6.2.1.  Timing of disclosure under Section 6.1.1

   The IPR disclosure required pursuant to section 6.1.1 must be made
   as soon as reasonably possible after the Contribution is published
   in an Internet Draft unless the required disclosure is already on
   file.

Is this what was intended?

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---

From: "todd glassey" <[email-masked]>
Date: Wed, 28 Apr 2004 07:21:10 -0700

Jorge - in the US Instance  The PEARS system *The PTO's online System shows
all US Patent's in filed and granted states. The EuroPatent Office is doing
similar efforts and access levels for their information so there is no
reason that ANYONE *(yes anyone) has any issues with doing a Patent Search.

http://appft1.uspto.gov/netahtml/PTO/help/status.html

In the US's case the updates happen Thursday's so Friday is the first
glimpse that the public gets at the updated USPTO data... and its all online
from the mid 1700's onwards (and I am referring to the years the 'mid
1700's' onwards).

Todd

----- Original Message ----- 
From: "Contreras, Jorge" <[email-masked]>
To: <[email-masked]>; <[email-masked]>
Cc: <[email-masked]>; <[email-masked]>
Sent: Wednesday, April 28, 2004 4:49 AM
Subject: RE: Issue found in RFC 3667 text

I agree that the 'race condition' is a bug in the 3667 legend language.
Making it consistent with 3668 would be more accurate.

As far as the second issue raised by Fred, that was an intentional feature.
If a patent application has not been published and the applicant wishes to
maintain the confidentiality of its contents, then he/she should not submit
an ID covered by the application's claims unless willing to disclose enough
to satisfy the 3668 requirements.

---

From: Fred Baker <[email-masked]>
Date: Wed, 28 Apr 2004 06:47:05 -0700

At 07:49 AM 04/28/04 -0400, Contreras, Jorge wrote:
>As far as the second issue raised by Fred, that was an intentional 
>feature.  If a patent application has not been published and the applicant 
>wishes to maintain the confidentiality of its contents, then he/she should 
>not submit an ID covered by the application's claims unless willing to 
>disclose enough to satisfy the 3668 requirements.

IANAL, and Todd Glassey advises me that there is some recent case law that 
sets aside what I'm about to say. Legal comment would be instructive to the 
discussion.

My understanding is that the confidentiality of the filing is not at his 
option. Since the claims have been neither supported or denied, he cannot 
say what IPR claims he might have. At most, he can say that he "may have 
IPR" related to the draft.

To say that he should not submit a draft in such a case is to say that the 
IETF should stop its work. Generally, invention happens in the course of 
solving a problem. I can solve a problem for my customer and in so doing 
generate potential IPR. If I can't talk about that in the course of 
standardization, the standard will therefore likely not meet my customer's 
needs. Voila, the internet runs on proprietary protocols and procedures, 
and standards lag. It is also to say that vendors are forced to develop 
early proprietary solutions, and their customers are forced to buy them, in 
addition to later standardized solutions, where what the customer is 
requesting is standardized solutions in the first place. Vendors today 
frequently contribute IPR to standardization discussions and solve their 
customers' issues in the context of the standard.

I really need to be able to say that I have filed a defensive patent 
without going into the details of the patent, as I myself don't know more 
than that I have filed it. If the argument is that I should not have filed 
the patent, I can point to a case currently being litigated in which
  - I wrote some code (for a prior employer)
  - I didn't patent it as I had pulled the algorithm out of the research 
literature,
  - An employee of a related company wrote a patent on the algorithm,
  - Now Cisco and said other company are locked in a legal battle.

Corporate policy requires me to write defensive patent applications to 
prevent such situations. So not filing the patent application, however much 
I might prefer it, is a violation of my company's policy. (I do push back 
when IMNSHO it gets to the point of being ridiculous, as rbarr will attest...)

It seems that in a case where the license is free and is extended in any 
case except if the licensing company sues mine (Cisco's practice on such 
things), this should be sufficient.

---

From: "todd glassey" <[email-masked]>
Date: Wed, 28 Apr 2004 10:24:36 -0700

Fred - let me crystallize this if I can - scary thought eh?

Perhaps what is really being said here is actually "that the person
submitting the draft may not have IPR therein" ... which could work for the
purpose of giving the IETF an arms-length from the IPR issues when it
publishes the drafts or workproduct.

It works to protect the IETF, since it is the "release" in effect I have
been talking about for a year or so now,  but even this step does not set
aside that others may have IPR against that IP, so its still prudent for all
concerned to do "full sweeps" of the available IP Databases when they pickup
or assume a role in some development effort.

Hey - Mssr Barr - what do you think of this one ? - That for people doing IP
Scans or Sweeps, that its also probably worth getting a Lexis Account to
search for litigation on certain issues as well...

Todd

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Wed, 28 Apr 2004 15:23:25 -0700

--On 28. april 2004 06:47 -0700 Fred Baker <[email-masked]> wrote:

>> feature.  If a patent application has not been published and the
>> applicant  wishes to maintain the confidentiality of its contents, then
>> he/she should  not submit an ID covered by the application's claims
>> unless willing to  disclose enough to satisfy the 3668 requirements.
>
> IANAL, and Todd Glassey advises me that there is some recent case law
> that sets aside what I'm about to say. Legal comment would be instructive
> to the discussion.
>

Fred,

at the risk of reflecting real practice:

I believe that 
<http://www.ietf.org/ietf/IPR/cisco-ipr-draft-ietf-tcpm-tcpsecure.txt> is a 
legitimate filing under the RFC 3668 rules.

The sum total of what it says about what the content of the pending patent 
application is:

Cisco is the owner of one or more pending patent applications relating to
the subject matter of "Transmission Control Protocol security
considerations" <draft-ietf-tcpm-tcpsecure-00.txt>.

I believe that's fair warning, and should be enough to allow the Cisco 
people who know about these patent applications to continue to work in the 
IETF.

I'd like a world where it was reasonable to say more. But I think saying 
that much is possible, and much preferable to saying nothing.

                      Harald

---

From: "Lawrence Rosen" <[email-masked]>
Date: Wed, 28 Apr 2004 19:15:13 -0800

Harald wrote:

I believe that

In today's world, where it is (according to you) unreasonable to say more,
how should the implementers of this draft IETF specification interpret
Cisco's letter? Should they take comfort that Cisco won't knock on their
door demanding royalties?

Or is there no such comfort to be found in IETF specifications and policies?

/Larry Rosen

---

From: "Richard Barr Hibbs" <[email-masked]>
Date: Wed, 28 Apr 2004 19:14:30 -0700

> From: Jorge Contreras
> Sent: Wednesday, 28 April 2004 04:49
>
> As far as the second issue raised by Fred, that
> was an intentional feature.  If a patent
> application has not been published and the
> applicant wishes to maintain the confidentiality
> of its contents, then he/she should not submit an
> ID covered by the application's claims unless
> willing to disclose enough to satisfy the 3668
> requirements.
>
I strongly agree with this position.  Without intending to
accuse anyone or any organization of using the I-D process
to inhibit or constrain others' product development, it's
not inconceivable that an unidentified IPR claim on a key
bit of technology could encumber developers in years of
costly legal maneuverings.

I'm not sure what recourse the IETF has if an I-D were to
advance and revelation of the IPR claims with demands for
license fees were made years later, however.  Maybe none,
save for the abandonment of products by vendors and
customers.

--Barr

---

From: "Lawrence Rosen" <[email-masked]>
Date: Thu, 29 Apr 2004 09:59:56 -0800

Jorge Contreras wrote:

I agree that it should be sufficient if a free license to the patent is
extended. But that is the very thing that is missing from the IETF policy.
No such license is required. 

So what is "sufficient" isn't provided.

/Larry Rosen

---

From: "todd glassey" <[email-masked]>
Date: Thu, 29 Apr 2004 14:35:10 -0700

Larry - and since we are looking at the term "License" herein - the person filing or submitting the "offering to the IETF" must be legally competent to do so... which is also something totally ignored in the IETF process.

Todd Glassey

  ----- Original Message ----- 
  From: Lawrence Rosen 
  To: 'Fred Baker' ; 'Contreras, Jorge' 
  Cc: [email-masked] ; [email-masked] ; [email-masked] 
  Sent: Thursday, April 29, 2004 10:59 AM
  Subject: RE: Issue found in RFC 3667 text

  Jorge Contreras wrote:

  It seems that in a case where the license is free and is extended in any case except if the licensing company sues mine (Cisco's practice on such things), this should be sufficient. 

  I agree that it should be sufficient if a free license to the patent is extended. But that is the very thing that is missing from the IETF policy. No such license is required. 

  /Larry Rosen