Subject: Proposed Update to Note Well

From: IETF Chair <[email-masked]>
Date: Thu, 21 Jun 2012 18:10:10 -0400

The IESG has heard many complaints that the Note Well is too complex.  After some discussion with counsel, we propose the following updated Note Well for your comment and review.  The below summary would be followed with a pointer to or text of more details, which will depend upon whether it's a meeting slide, on the web site, on the registration page, or on a mailing-list greeting.

On behalf of the IESG,
  Russ Housley
  IETF Chair

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

NOTE WELL

In summary:

   By participating with the IETF, you agree to follow IETF processes.

   If you write, say, or discuss anything in the IETF, formally or informally,
   (all of which we call "a contribution") that you know is covered by a patent
   or patent application you or your employer own, one of you must disclose
   that.

   You understand that meetings might be recorded and broadcast.

This would be followed with a pointer to or text of more details,
which will depend upon whether it's a meeting slide, on the web site,
on the registration page, or on a mailing-list greeting.

---

From: Stephan Wenger <[email-masked]>
Date: Thu, 21 Jun 2012 23:01:26 +0000

Hi Russ, policy-folks,

I support the simplification of the Note Well.

Two concerns, one substantial and one nit, with respect to the language
proposed.

The use of the work "know" in the context of requiring a disclosure is IMO
substantially wrong.  It should be "believe".  Two reasons.  The pragmatic
one: Positive "knowledge" of a patent covering a technology is not
something the IETF can expect from a layman.  The net result of this
language could well be that legal departments advise participants to never
make disclosures, as they are not patent lawyers (let alone courts of law)
that can reasonably make a determination of infringement.  Second, the
procedural reason:  Knowledge is not what BCP79 requires.  BCP79 requires
(in section 6) knowledge of IPR of which the contributor "believes" that
it covers, or may cover, the contribution.   According to my parsing of
English (and note that I'm not a native speaker), in the sentence
proposed, the "know" is attached to "covered" and not to the existence of
a patent.  

The nit: "you or your employer own".  I believe that "own" is a close
enough (and practical enough) approximation of "right to assert", which is
required in BCP79.  However, there are scenarios where one does not "own"
IPR (in the sense of an assignment), but has the right to assert.  One
example would be an exclusive license.  In the light of recent legal
maneuvering (i.e. HTC asserting patents that they have borrowed from
Google--at least that is my understanding), language closer to BCP79's
language may be preferable.  Then again, the motivation of this exercise
appears to be to make the Note Well more accessible, and the language as
provided is not in contradiction with BCP79; it just leaves out one exotic
class of cases.  So I call this a nit.  Still, thinking about a
replacement for "own" that is more layman-friendly than "right to assert"
would be a worthwhile exercise.

Regards,
Stephan

On 6.21.2012 15:10 , "IETF Chair" <[email-masked]> wrote:

>The IESG has heard many complaints that the Note Well is too complex.
>After some discussion with counsel, we propose the following updated Note
>Well for your comment and review.  The below summary would be followed
>with a pointer to or text of more details, which will depend upon whether
>it's a meeting slide, on the web site, on the registration page, or on a
>mailing-list greeting.
>
>On behalf of the IESG,
>  Russ Housley
>  IETF Chair
>

---

From: Barry Leiba <[email-masked]>
Date: Fri, 22 Jun 2012 02:04:25 +0200

Stephan, you're right about the first point.  We were focused on "knowing"
about the IPR, but it's "believe" is covered, indeed.  For the purpose of
this briefest of brief summaries -- the point here is to make something
that could actually be shown *and read out* by the chairs in IETF sessions
-- I think replacing "know" with "believe" is the best answer.

For the second point, "own", you're also right, but for this purpose I
think we have to say that it has to yield to simplicity.  The more detailed
reference will have to be the place to go for the proper legal info.  We
did think about this, and "own" was the closest we could get in "sound
bite" form.

Barry, Applications AD

On Thursday, June 21, 2012, Stephan Wenger wrote:

> On 6.21.2012 15:10 , "IETF Chair" <[email-masked] <javascript:;>> wrote:
>

---

From: Scott Brim <[email-masked]>
Date: Thu, 21 Jun 2012 21:01:59 -0400

Nice job.  One comment:

On Thu, Jun 21, 2012 at 6:10 PM, IETF Chair <[email-masked]> allegedly

>   If you write, say, or discuss anything in the IETF, formally or

Can you fit "even between meetings" at the end of this line?  Some people
will think "in the IETF" refers to physical meetings, and may not get
through the detailed info that comes later.

>   or patent application you or your employer own, one of you must disclose

I also like know -> believe.

Thanks ... Scott

---

From: Peter Saint-Andre <[email-masked]>
Date: Thu, 21 Jun 2012 19:18:20 -0600

I like the idea of a brief summary that can be shown on one readable
slide at the beginning of each session, read aloud by a meeting chair,
etc. Wordsmithing below.

>    or patent application you or your employer own, one of you must disclose

With all due respect, that sentence could be improved. I suggest:

   Anything that you write, say, or discuss in the IETF, formally or
informally,
   at an IETF meeting or in another IETF venue such as a mailing list,
is an
   IETF contribution. If you believe that a contribution of yours is
covered by
   a patent or a patent application made by you or your employer, you must
   disclose it.

Peter

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

---

From: Sam Hartman <[email-masked]>
Date: Thu, 21 Jun 2012 22:45:40 -0400

I like Peter's rephrasing  for a number of reasons.

1) Clearly states who is responsible for making the disclosure happen
(the IETf contributor)

2) Defines IETf contribution in its own sentence which makes it easier
to reference later.

3) Makes it clear that things like mailing list conversations are
covered.

---

From: Jorge Contreras <[email-masked]>
Date: Thu, 21 Jun 2012 22:49:00 -0400

Sent from my iPhone

On Jun 21, 2012, at 7:01 PM, Stephan Wenger <[email-masked]> wrote:

> would be a worthwhile exercise

The word would be "control".

---

From: Stephan Wenger <[email-masked]>
Date: Fri, 22 Jun 2012 02:59:44 +0000

On 6.21.2012 19:49 , "Jorge Contreras" <[email-masked]> wrote:
>> So I call this a nit.  Still, thinking about a replacement for "own"
>>that 
>> is more layman-friendly than "right to assert" would be a worthwhile
>>exercise

> The word would be "control".

Agreed.  And "control" sounds reasonably straightforward to me.
Stephan

---

From: David Morris <[email-masked]>
Date: Thu, 21 Jun 2012 20:32:02 -0700 (PDT)

I agree .. Peter's version is clear and concise.

---

From: Dan York <[email-masked]>
Date: Fri, 22 Jun 2012 08:19:07 -0400

+1 for Peter's version.  Very concise and clear.  Thanks for doing that, Peter.

Dan

-- 
Dan York  [email-masked]
http://www.danyork.com/   skype:danyork
Phone: +1-802-735-1624
Twitter - http://twitter.com/danyork
--------------------------------------------------------
All comments and opinions are entirely my own and have no connection whatsoever to any employer, past or present. Indeed, by tomorrow even I might be disavowing these comments.
--------------------------------------------------------

---

From: Bob Hinden <[email-masked]>
Date: Fri, 22 Jun 2012 11:13:47 -0700

Russ,

I like that it is shorter, but I think it might be a little too short.  That is, I think it needs to be clearer what is a contribution and then mention patents.  For example:

  If you write, say, or discuss anything in the IETF, formally or informally,
  that is considered "a contribution" to the IETF.  If you believe this is covered by a patent
  or patent application you or your employer own, one of you must disclose
  that.

Thanks,
Bob

---

From: "Robin Uyeshiro" <[email-masked]>
Date: Fri, 22 Jun 2012 10:37:52 -1000

I'd like to comment a bit on patent ownership/control/etc.  Patents are
"assigned" by the (US) patent office, usually, these days, to the company
for whom the inventor works.  "Ownership" is not a term used.  "Control" can
be problematic, if the inventor changes employment.  If you invent something
for which a patent is issued and assigned to your company, then you change
employment, then neither you nor the company you currently work for
"control" that patent.  But you should probably still disclose the patent.

I'd vote for

>>   If you are aware that a contribution of yours is covered by
>>   patents, you need to disclose that fact.

-----Original Message-----
From: [email-masked] [mailto:[email-masked]] On Behalf Of Bob
Hinden
Sent: Friday, June 22, 2012 8:14 AM
To: IETF
Cc: Bob Hinden; IETF Announce
Subject: Re: Proposed Update to Note Well

Russ,

I like that it is shorter, but I think it might be a little too short.  That
is, I think it needs to be clearer what is a contribution and then mention
patents.  For example:

  If you write, say, or discuss anything in the IETF, formally or
informally,
  that is considered "a contribution" to the IETF.  If you believe this is
covered by a patent
  or patent application you or your employer own, one of you must disclose
  that.

Thanks,
Bob

After some discussion with counsel, we propose the following updated Note
Well for your comment and review.  The below summary would be followed with
a pointer to or text of more details, which will depend upon whether it's a
meeting slide, on the web site, on the registration page, or on a
mailing-list greeting.

---

From: Jorge Contreras <[email-masked]>
Date: Fri, 22 Jun 2012 16:43:15 -0400

On Fri, Jun 22, 2012 at 4:37 PM, Robin Uyeshiro <[email-masked]>wrote:

> for whom the inventor works.

No, the patent is assigned by the inventor to the company.  The PTO just
records the assignment.

>  "Ownership" is not a term used.  "Control" can
> "control" that patent.

This is just not correct.  If the patent is assigned to the company, and
the inventor leaves the company, the company still owns and controls the
patent.

> But you should probably still disclose the patent.
>

Yes.

---

From: "Robin Uyeshiro" <[email-masked]>
Date: Fri, 22 Jun 2012 10:49:42 -1000

This is just not correct.  If the patent is assigned to the company, and the
inventor leaves the company, the company still owns and controls the patent.

 [RU]  Your new (current) company does not "own" the patent and neither do
you, if you have signed away your rights, which you are required to do for
most companies in the US.  But you should still disclose the patent.

---

From: Jorge Contreras <[email-masked]>
Date: Fri, 22 Jun 2012 16:52:51 -0400

On Fri, Jun 22, 2012 at 4:49 PM, Robin Uyeshiro <[email-masked]>wrote:

> **
>  [RU]  Your new (current) company does not "own" the patent and neither
> do you, if you have signed away your rights, which you are required to do
> for most companies in the US.  But you should still disclose the patent.
>
> Ah, I see your point now.  You are right about ownership, but this would
become a "third party disclosure".  It's not required, but is recommended
under BCP 79.  It's the same as if you knew about a patent held by another,
unrelated company.  Once you leave the first employer, you don't know what
the fate of the patent is (e.g., it could be sold, abandoned, etc.) so you
aren't required to disclose it (just encouraged to).

---

From: John C Klensin <[email-masked]>
Date: Fri, 22 Jun 2012 17:11:43 -0400

--On Friday, June 22, 2012 16:52 -0400 Jorge Contreras
<[email-masked]> wrote:

>>  [RU]  Your new (current) company does not "own" the patent
>>  and neither do you, if you have signed away your rights,
>> which you are required to do for most companies in the US.
>> But you should still disclose the patent.
>> 
> become a "third party disclosure".  It's not required, but is
> recommended under BCP 79.  It's the same as if you knew about
> a patent held by another, unrelated company.  Once you leave
> the first employer, you don't know what the fate of the patent
> is (e.g., it could be sold, abandoned, etc.) so you aren't
> required to disclose it (just encouraged to).

Jorge, while I understand your reasoning, it seems to me that
you are creating a loophole here that we don't want (and that
isn't justified by the BCP).   Consider the following scenario: 

While working for company X, I invent something and a patent
application is filed with my name as the inventor.  According to
company policy, I assign all rights to the patent (if awarded)
to the company.   I then leave company X and join company Y.
Just to make this a little easier by avoiding some of the
complex issues associated with disclosing patent applications),
assume that there are no survivable NDAs with company X that
prevent my disclosing the patent application to company Y or to
the IETF.  As another simplification, assume that I became
active in the IETF only when I joined company Y (that avoids any
question about my obligation or lack thereof to disclose while I
was still working for company X).

Now, I find myself in a WG that is considering a technology that
I reasonable believe interacts with the patent application in
question.  There is no basis on which I can claim that I didn't
know about that application... after all, I signed it.   So I
think I'm _obligated_ to disclose.  Whether that disclosure is
1st party (I'm the inventor) or third party (the thing belongs
to company X) seems like uninteresting hair-splitting.  And my
disclosure might say "I know about this application but you need
to check with the patent owner, which was Company X when last I
had first-hand knowledge, as to what its current status is".
But asserting that such a disclosure is not required puts the
notion of what I might reasonably be expected know into a rather
different light, one that, IMO, might be very damaging to the
process.

And, no, I don't think the Note Well needs to go nearly into
that level of detail.  For it, it seems to me that it is
sufficient to say that one is obligated to disclose if one has
first-hand, direct, knowledge of the patent (or application) and
that disclosure under other circumstances is encouraged and
might, in some cases, be required.

     john

---

From: Barry Leiba <[email-masked]>
Date: Sat, 23 Jun 2012 00:09:22 +0200

I do jot agree with what John says below.  Look at Section 6.6 of RFC 3979,
where it talks abou who owns the IPR.  In the case given below, the
participant no longer owns the IPR, directly or indirectly.  It's owned by
company X.  The participant is, thus, encouraged to file a third-party
disclosure, but nothing is required.

That said, I, as John, think none of that matters for this brief "sound
bite".  I think this should say nothing more than that if you know about
relevant IPR you or your employer have to disclose.  The "ifs, ands, and
buts," and any other qualifications should be left for the details part.

Barry

On Friday, June 22, 2012, John C Klensin wrote:

> <[email-masked] <javascript:;>> wrote:
>

---

From: John C Klensin <[email-masked]>
Date: Fri, 22 Jun 2012 18:45:00 -0400

(subject changed, since we seem to be in agreement about the
Note Well issues)

--On Saturday, June 23, 2012 00:09 +0200 Barry Leiba
<[email-masked]> wrote:

> I do jot agree with what John says below.  Look at Section 6.6
> of RFC 3979, where it talks abou who owns the IPR.  In the
> case given below, the participant no longer owns the IPR,
> directly or indirectly.  It's owned by company X.  The
> participant is, thus, encouraged to file a third-party

Ok.  Not how I remembered the intent, but that is clearly what
it says.   I do think it creates a gaping loophole for a
company/organization that wanted to subvert the rules, but so it
goes. 

> That said, I, as John, think none of that matters for this
> brief "sound bite".  I think this should say nothing more than
> that if you know about relevant IPR you or your employer have
> to disclose.  The "ifs, ands, and buts," and any other
> qualifications should be left for the details part.

yes.

    john

---

From: "Eggert, Lars" <[email-masked]>
Date: Sat, 23 Jun 2012 08:06:32 +0000

Hi,

having just gone through a similar exercise over on the IRTF side of things (see http://irtf.org/ipr), I wonder if what we came up with as a text couldn't be adapted to also work for the IETF:

> The IRTF follows the IETF Intellectual Property Rights (IPR) disclosure rules. This is a summary of these rules as they relate to IRTF research group discussions, mailing lists and Internet Drafts:
> 
> 	• If you include your own or your employer’s IPR in a contribution to an IRTF research group, then you must file an IPR disclosure with the IETF.
> 	• If you recognize your own or your employer’s IPR in someone else’s contribution and you are participating in the discussions in the research group relating to that contribution, then you must file an IPR disclosure with the IETF. Even if you are not participating in the discussion, the IRTFstill requests that you file an IPR disclosure with the IETF.
> 	• Finally, the IRTF requests that you file an IPR disclosure with the IETF if you recognize IPR owned by others in any IRTF contribution.
> You may file an IPR disclosure here: http://www.ietf.org/ipr/file-disclosure
> 
> See RFC 3979 (BCP 79) for definitions of “IPR” and “contribution” and for the detailed rules (substituting “IRTF” for “IETF”).

Lars

---

From: Barry Leiba <[email-masked]>
Date: Sat, 23 Jun 2012 13:47:54 +0200

> having just gone through a similar exercise over on the IRTF side of
things
> (see http://irtf.org/ipr), I wonder if what we came up with as a text
couldn't
> be adapted to also work for the IETF

It's too long.  We're looking for something *very* short, just a "sound
bite", which gets the main point across and sends anyone who needs more
details to the right place.  That's why we're trying to resist all the
"Yes, but that's not quite it, and you have to add this" modifications.  I
think even the initial one we posted is a bit too long, and PSA has
distilled it, in a couple of his messages, to what I think is the real
essence.

Barry