Subject: Question 7 (IPR) on the document shepherd writeup

From: Barry Leiba <[email-masked]>
Date: Sun, 15 Jul 2012 11:53:43 -0400

In case my other message about the document shepherd writeup in
general[1] is too long, and anyone should choose not to read it, I
want to extract the comment about question 7.  Question 7 is this:

> (7) Has each author confirmed that any and all appropriate IPR
> disclosures required for full conformance with the provisions of BCP 78
> and BCP 79 have already been filed. If not, explain why.

Here's what I said about that in the other message:

(7) This question has been a bit problematic, not in its existence or
in the answers, but in the process of getting the answers.  Note that
the question is looking for assurance of compliance with BCP 79, and
note that BCP 79 specifically requires disclosure only for IPR that
the contributor personally knows about.  *Very* often, I'm seeing some
delays in getting documents to the responsible AD because one or more
of the authors has to go off and ask her company's legal department
before answering the query from the shepherd or chair.

In general, it should NOT be necessary to ask one's legal advisors
about this, and the question the shepherds ask should be worded so as
not to give that impression.  "Do you or your company have any IPR on
this document?" is a clear prompt for someone to check with the
lawyers.  "Do you personally know of any IPR related to this document
that has not already been disclosed?" is more likely to get the right
sense across.  If people want to voluntarily take the extra step of
checking with their companies, that's OK... but please don't phrase
your question in a way that makes them think they have to.

Barry, Applications AD

[1] https://www.ietf.org/mail-archive/web/wgchairs/current/msg10978.html

---

From: <[email-masked]>
Date: Sun, 15 Jul 2012 12:28:21 -0400

Barry,

> your question in a way that makes them think they have to.

The suggestions for how to better phrase the question so that it's
scoped to the BCP 79 responsibilities are good (IMHO), but it's inevitable
that some authors will go for their lawyers regardless of how carefully
that question is phrased :-(.  I might suggest asking authors about
this at the *start* of WG Last Call so that any time required to deal
with lawyers runs concurrently w/WG Last Call instead of sequentially.

OTOH, here's the form of the question I used last time I sent a draft
to the IESG - none of the authors involved went for their lawyers (AFAIK):

------------------

In order to submit the RFC Publication Request for this draft, I need
each author to independently confirm that:

       Any and all appropriate IPR disclosures required for full conformance
       with the provisions of BCP 78 and BCP 79 have already been filed.

This is only about disclosures that *you* are required to file.  If you
are not aware of any such required disclosure, the answer to this request
is "Yes, confirmed".

------------------

Thanks,
--David

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On Behalf
> Of Barry Leiba
> Sent: Sunday, July 15, 2012 11:54 AM
> To: [email-masked]
> Subject: Question 7 (IPR) on the document shepherd writeup
>

---

From: Dave Crocker <[email-masked]>
Date: Sun, 15 Jul 2012 09:42:50 -0700

> your question in a way that makes them think they have to.

In its current form, Q7 forces a level of indirection and 
interpretation.  This invites extra work and misinterpretation.

The form should itself present the question to be asked.

If I'm reading things correctly, that means Q7 should be revised to be:

      (7) Has each author confirmed that their direct, personal 
knowledge of any IPR related to this document has already been 
disclosed, per BCP 79?

I added the reference to bcp 79 merely to anchor the question.

d/

-- 
  Dave Crocker
  Brandenburg InternetWorking
  bbiw.net

---

From: Andrew Sullivan <[email-masked]>
Date: Mon, 16 Jul 2012 06:49:29 -0400

> the contributor personally knows about.

Even though BCP 79 requires that, the question is (perhaps
unfortunately) not worded that way.  The question asks whether each
author has "confirmed" that "any and all appropriate … disclosures"
have been made.  Given BCP 78's section 5.1, I'm not surprised that
our asking people to be sure about this is causing them to talk to
their legal departments.

But more importantly, why shouldn't the question cause people to ask
their legal departments?  I seem to recall a recent event in which
there turned out to be IPR and someone claimed to be naive or foolish
or whatever.  Isn't the point of this question to cause people to be
unable to claim ignorance when they "ought to have known"?

Best,

A

-- 
Andrew Sullivan
[email-masked]

---

From: Peter Saint-Andre <[email-masked]>
Date: Mon, 16 Jul 2012 08:40:21 -0600

On 7/15/12 10:42 AM, Dave Crocker wrote:
>      (7) Has each author confirmed that their direct, personal knowledge
> of any IPR related to this document has already been disclosed, per BCP 79?
> 

That seems sensible. I like the focus on "direct, personal knowledge";
Tim Polk and I emphasized that as well in our I-D on "Promoting
Compliance with Intellectual Property Rights (IPR) Disclosure Rules":

https://datatracker.ietf.org/doc/draft-polk-ipr-disclosure/

Peter

-- 
Peter Saint-Andre
https://stpeter.im/

---

From: "Worley, Dale R (Dale)" <[email-masked]>
Date: Mon, 16 Jul 2012 12:26:59 -0400

> > I added the reference to bcp 79 merely to anchor the question.

Ideally, the question would quote all the necessary parts of the BCPs,
so that the section of the document shepherd writeup could be completely
self-contained, and simply mailed to each of the authors.  From my
experience as a document shepherd, that would have been the easiest
situation.

The question then is whether quoting the necessary parts of the BCPs
would make the section so long as to be impractical.

In regard to the above proposal, that text suggests that *no* parts of
the BCPs have to be read to answer the question.  So I would phrase it
this way:

  (7) Has each author confirmed that their direct, personal knowledge
      of any IPR related to this document has already been disclosed,
      as is required by BCP 79?

That phrasing implies that reading BCP 79 is not required to answer the
question.

Dale

---

From: Yaakov Stein <[email-masked]>
Date: Wed, 18 Jul 2012 07:07:34 +0000

> https://datatracker.ietf.org/doc/draft-polk-ipr-disclosure/

However, this is NOT the wording in RFC 3979. 
There the expression is "reasonably and personally known"
and the explanation is quite precise :
      "Reasonably and personally known": means something an individual
      knows personally or, because of the job the individual holds,
      would reasonably be expected to know.

So, while a full patent search is certainly not required,
the simple steps that a reasonable person would take, 
such as talking with co-workers and checking back emails to jog his/her memory,
ARE required before saying "I don't know of any IPR".

Y(J)S

---

From: James Polk <[email-masked]>
Date: Wed, 18 Jul 2012 15:54:44 -0500

>such as talking with co-workers and checking back emails to jog 

I have 12GB of email - having had the same mail program since 1994, 
am I expected to examine my whole storage of email before answering 
this part of the question each time? This is not reasonable IMO.

James

---

From: "Fred Baker (fred)" <[email-masked]>
Date: Wed, 18 Jul 2012 22:05:22 +0000

> ARE required before saying "I don't know of any IPR".

I guess the question I have is what is "reasonable". If I'm a patent troll, it is *entirely* reasonable for me to believe that you should know about my IPR. The place I wouldn't want this to take us is that someone in a long black robe has to figure out how to answer it.

I like David Black's approach. I did something similar recently, telling the authors of a given draft that I was going to say "yes", and that if they thought otherwise they needed to do something to correct the situation. I don't recall whether they were Cisco authors; if they were, I would expect that they either said "I don't know of anything" or went to a certain web page and filled it out (which they were supposed to do when filing the -00 draft), and perhaps mentioned the draft on a certain internal malling list. What happens after that is out of their control.

---

From: Yaakov Stein <[email-masked]>
Date: Thu, 19 Jul 2012 05:00:13 +0000

James

If you have no way of finding anything in your 12GB of back mails,
then I suggest deleting them. They are just taking up disk space.

However, I expect that you have some way of searching through them.
So do a search for "foo" or "oof", spending a few minutes before answering.

Y(J)S

---

From: James Polk <[email-masked]>
Date: Thu, 19 Jul 2012 15:49:51 -0500

>So do a search for "foo" or "oof", spending a few minutes before answering.

Imagine if I wrote a draft that went to the IESG about SIP or RSVP or 
Geopriv (i.e., geolocation) or SDP or DiffServ or DHCP or ECRIT 
(i.e., emergency calling), just how easy would any one of those 
searches be through my email database of 12GB to "know", and "not 
guess", whether there was any IPR discussion related to any one of 
those topics that I knew about? I have authored standards track or 
BCP RFCs on each of these topics listed here.

I'd have to _review_ every single time the word or initialism/acronym 
appeared in those 12GB to accurately state whether or not I knew *at 
one time* about IPR. And you think this will only take a few minutes? 
We're not talking about a simple search to see if the 
word/acronym/initialism appears - we're talking about understanding 
the context it was used in, wherever it appears in any and every 
single email it appears in.

Who's kidding who here?

And this doesn't include all the Cisco internal discussions and 
documentation involving each of these topics that do not involve IPR, 
since we do have products in each technology mentioned here.

Now, perhaps if my email database had a Google style search engine 
capability, it wouldn't take as long, but it doesn't, and it is not 
reasonable for me to have to move to a mail program that has such a 
capability just to satisfy this Question 7 (if there even is a mail 
program with that king of search capability).

and I don't delete any non-spam emails, ever, and I shouldn't have to 
either, especially to make searches to satisfy Question 7 easier.

I can only tell you what I remember, and that's reasonable.

James

---

From: Warren Kumari <[email-masked]>
Date: Thu, 19 Jul 2012 21:08:57 -0400

On Jul 16, 2012, at 6:49 AM, Andrew Sullivan wrote:

> their legal departments?

Maybe it should, but expect the throughput to drop significantly…

I am a co-author on a draft -- the WG chair sent Q7 to all authors, asking them to ACK on May 21st. 
One of the authors wanted to check with his / her legal group[0] -- of course, no engineer likes talking to legal, so he / she delayed for a few weeks, then went to poke them. Legal (moving at their standard glacial pace) finally replied saying "No IPR" on July 12th…

I am not sure if this is a feature or a bug, but at the very least, it is an anecdote :-P

W
[0]: Normally he / she doesn't, but the wording of Q7 makes makes it seem like maybe you should...

>  I seem to recall a recent event in which

-- 
There are only 10 types of people in this world -- those who understand binary arithmetic and those who don't.

---

From: Andrew Sullivan <[email-masked]>
Date: Thu, 19 Jul 2012 22:12:31 -0400

> Maybe it should, but expect the throughput to drop significantly…

Of course.  

When the decision about making double-double-sure that people really
had read the boilerplate they were submitting happened, I sort of
figured that people were making this trade off.  If you thought you
already understood what you'd submitted (as every single person I have
asked this question of said they already had, why am I bothering them
again, and so on), then your natural reaction to this new "are you
sure?" question is to kick it to a higher authority, which in the case
of legal questions is the legal department.

I was and remain of the position that Q7 is an instantiation of the
principle, "Hard cases make bad law."  The old version of that
approximate question was better.

A

-- 
Andrew Sullivan
[email-masked]

---

From: Yaakov Stein <[email-masked]>
Date: Fri, 20 Jul 2012 06:22:58 +0000

> I can only tell you what I remember, and that's reasonable.

In the interest of expediting disclosures,
we seem to have forgotten why we have the disclosure process at all.

It is for those participating in the process:
We need working groups to be able to make informed decisions
before standardizing a mechanism that may have a heavy tax on it.
Perhaps we can't find everything (e.g., what recently happened in CODEC)
but we need to expend a reasonable effort.

It is for the good of the organizations who send people to SDOs:
YOU may not be able to find anything in your email file,
but as part of a deposition process the lawyers will get that file
and they WILL find that you were informed at some point of some IPR
(they have experts at going through Gigabytes of data) 
and they CAN have that IPR ruled unenforceable and may further instigate
investigations of your company by anti-trust or competition law enforcement agencies.

I fully understand your not wanting to waste time on searching.
But there were two recent cases here at the IETF where active participants
forgot to disclose patents on which they were listed as inventors.
I completely believe them that they forgot about these patents,
but a quick search would have saved them the embarrassment 
and would have saved the IETF second LCs.

Y(J)S

---

From: "DRAGE, Keith (Keith)" <[email-masked]>
Date: Fri, 20 Jul 2012 12:02:52 +0200

I'd also point out that providing the answer to all the questions in the publication request is not something that suddenly introduces a set of rules at publication request time. Rather it is making sure the appropriate discussion or declaration has occurred at some point.

If you are editor or author of a document, you should have been asking yourself the IPR question from the very point you created a word to the document, or entered into an IETF discussion about it. So this hardly becomes something you go and ask your lawyers about at publication request time.

Further if you do have an IPR declaration to make at publication request time, the WG should then be taking time out to ask themselves the question of whether the solution is the correct technical solution in the face of that IPR declaration, so you have just delayed the IETF process by at least a month.

It is like leaving the NIT analysis or the evaluation of normative versus informative references to that point. Either of those could lead to a complete rewrite of the document so you need to do those before WGLC.

Surely working out your IPR position is what the Note Well is all about, among other things.

Regards

Keith

> From: [email-masked] [mailto:[email-masked]] On
> Behalf Of Yaakov Stein
> Sent: 20 July 2012 07:23
> To: James Polk; Peter Saint-Andre; Dave Crocker
> Cc: [email-masked]; Barry Leiba
> Subject: RE: Question 7 (IPR) on the document shepherd writeup
>

---

From: John C Klensin <[email-masked]>
Date: Fri, 20 Jul 2012 11:44:50 -0400

Barry,

I notice with interest that, despite the relatively long thread
your remark spawned, neither you nor any other IESG member have
commented further.  I have to deal with this for four document
today, so want to suggest two principles that have not been
mentioned in the thread:

	(i) It is generally a bad idea for non-lawyers to
	interpret text with legal meaning and implications to
	others.  IMO, it is especially bad if those
	interpretations are made on behalf of the IETF.  I
	shouldn't be doing it as a WG Chair and the IESG
	shouldn't be doing it either.
	
	(ii) In general, the IESG has no authority to impose
	restrictions on the process for reviewing and approving
	documents unless those restrictions represent community
	consensus (normally after Last Call, etc.)

Combining those two, I think it is entirely reasonable for the
IESG to require that, as document shepherd, I remind authors and
editors that, by submitting documents, they have already agreed
that they are in compliance with BCP 79.  I think it is
reasonable for me to ask that they affirm that, if anything has
changed or come to their attention that requires a statement or
update to have them in conformance with BCP 79, they affirm that
they have done that or are in the process of doing that.  And I
think is is reasonable for the IESG to ask that I verify that
I've done that.

If more is needed beyond that, the pointers in the Note Well,
and the boilerplate language in the I-Ds, I think we need to
open up BCP 79 and clarify it, not, however unintentionally,
apply new interpretations or restrictions via a document writeup.

    john

--On Sunday, July 15, 2012 11:53 -0400 Barry Leiba
<[email-masked]> wrote:

> general[1] is too long, and anyone should choose not to read
> it, I want to extract the comment about question 7.  Question
> 7 is this:
> 
>> disclosures required for full conformance with the provisions
>> of BCP 78 and BCP 79 have already been filed. If not, explain
>> why.
> 
>...

---

From: James Polk <[email-masked]>
Date: Fri, 20 Jul 2012 14:40:33 -0500

>we seem to have forgotten why we have the disclosure process at all.

I think some may be underestimating what's reasonable for one or some 
might not be reasonable for some others.

>before standardizing a mechanism that may have a heavy tax on it.

And if I am the author of an ID and I don't have direct knowledge of 
all the claims within Cisco's patents (counted in the thousands) and 
patent submissions (several times the number of patents), how's the 
WG to make that informed decision?

Before anyone goes off on the finite concept of "we're only talking 
about what I am aware of", that conflicts with the "are you sure?" 
question that's been brought up several times on this thread alone.

I can tell you what I'm aware of. I should be held accountable for 
IPR that has my name on it. There's no doubt about that, and I have 
little sympathy for those who forget that they were aware of IPR that 
is still valid and don't claim to know about it. It's just the "are 
you sure?" question about all these emails I (and others) have where 
an idea might have been discussed in the 90s that I'm not a listed 
inventor of that someone else believes I should have remembered. 
That's what I have a problem with.

>YOU may not be able to find anything in your email file,

file? I don't use MS Outlook. I have hundreds of separate email files 
that each are directories or folders within my email program. 
Searching for a phrase means an exact pattern match, or no match. 
This isn't the case with my Internet search engines, so someone (me?) 
is going to have to go through every file searching for every 
instance of a single word or string and look at the context of how 
that word or string was used to know if it happens to approaching any 
IPR claim you are looking for or what a draft is discussing.

>(they have experts at going through Gigabytes of data)

sure, the are law firms that do this, and those assigned to this task 
get to do this for however long it takes *because* that is their job 
at that moment. Mine is not writing standards, but I believe in 
interoperable solutions so I take the extra time to coordinate with 
other organizations to ensure how my company builds products will 
work with other products.

>forgot to disclose patents on which they were listed as inventors.

You may forgive that situation, but I currently cannot. I know 
everything about what I'm listed as an inventor of, therefore I find 
it impossible for others not to have same memory about what they are 
listed as inventors of.

But that is not the point you are making to me, because I am fully 
aware of many other inventions in which I'm not listed as an 
inventor, and you or the IETF want to know about what I know about 
that IPR as well, don't you? This is the rub, because I don't have 
intimate knowledge about the individual claims of nearly all those 
other inventions, yet I know about the inventions. Is IPR considered

         knowing about inventions, including others' inventions?
or
         knowing about my own inventions?

That isn't covered in anything I've read yet. That's where "searching 
through my email" becomes a problem/hassle/pain-in-the-a$$ due to its size.

>but a quick search

there's nothing quick about a search, and that's what isn't getting through.

For example, if you and Dave have a technical email discussion about 
a new thing, and you don't do anything further with that discussion, 
and in fact delete the thread, are you held accountable for the 
information exchanged within that thread, even if it took place 5 or 
10 or 15 years ago?

If you say "I'm not accountable for reporting it", yet some lawyer 
finds that thread on Dave's computer - what kind of pickle are you in now?

According to what you wrote above, let me quote

         "they CAN have that IPR ruled unenforceable and may
         further instigate investigations of your company by
         anti-trust or competition law enforcement agencies."

So, it sounds like deleting emails is a really bad idea too...

how embarrassing would that be for you?

Now, I'm not attacking you, I'm just saying "a quick search" is a 
naive view point IMO. Having to remember every discussion you've ever 
had about a certain technology to the point of remembering each claim 
of a patent is also unreasonable.

What is reasonable is "I can tell you what I remember doing or 
inventing", and that should involve only the ideas I've had direct input in.

That's all I'm saying.

James

>would have saved them the embarrassment

---

From: Barry Leiba <[email-masked]>
Date: Fri, 20 Jul 2012 17:07:25 -0400

> commented further.

I can't speak for other IESG members, but perhaps one reason they
haven't commented is that I started this with a personal view, not
reflecting any IESG discussion.  The reason *I* haven't said anything
further is that I think the conversation has been going in a
reasonable direction, and I haven't had anything more to say until
your message.

>         consensus (normally after Last Call, etc.)

Absolutely correct, as I see it.  And I don't believe it's been the
IESG's intent to try to do anything of the sort.

> think is is reasonable for the IESG to ask that I verify that

Yes.  And that is what I believe the intent of Question 7 is.

That was the full purpose of my comment about Question 7: to make the
point that all it is asking is that the chairs or shepherds
double-check with the authors in the manner you say above, and nothing
more.

I am (again, personally) in complete disagreement with Yakov's
comments in this thread.  I don't think there's anything in BCP 79
that *requires* anyone but the contributor, personally, to be involved
in determining what the contributor "reasonably and personally" knows
about.  But as you say, we can debate that until penguins meet
puffins, and it ultimately comes down to each individual's (or her
lawyer's) interpretation of BCP 79.

Barry