Subject: Re: Proposed Update to Note Well

From: [email-masked] (Noel Chiappa)
Date: Fri, 22 Jun 2012 11:45:43 -0400 (EDT)

> From: Peter Saint-Andre <[email-masked]>

    > traditionally the IPR rules have applied to real people

Well, like you, I don't want to get into a rathole on this. Yes, nothing we
do can absolutely stop patents going unknown about (e.g. patents from
entities which don't participate), but I would prefer to be as expansive as
possible, and try and drag parent organizations in too, to the degree we can
(we have already, IIRC, had cases where an organization knew of a patent, but
a particular individual did not). IANAL, of course, but I assume since the
original attorney-generated text did include this concept, there was some
valid legal foundation for doing so.

    > And somehow we also lost the point about "you know" or "you believe"
    > along the way.

That was deliberate. To me, "believe" is a loophole big enough to drive a
truck through. Things either are, or are not, covered by a patent. (Yes, yes,
I know: legally speaking, that's not so until a finder of fact makes that
determination.) But leaving out the 'believe' means you can't say 'well, _I_
didn't think it applied' - leaving it out implies a duty to take in a wider
circle of assessment of whether it applies than simply one's personal guess.
Plus it also makes the text shorter.. :-)

	Noel

---

From: Peter Saint-Andre <[email-masked]>
Date: Fri, 22 Jun 2012 09:51:22 -0600

On 6/22/12 9:45 AM, Noel Chiappa wrote:
>     > From: Peter Saint-Andre <[email-masked]>>
>
> truck through. 

You're right. I was just trying to incorporate consensus. ;-)

So:

   By participating here, you agree to follow IETF processes.

   If you actively contribute and you know that your contribution
   is controlled by patents, you need to disclose that.

   You understand that meetings might be recorded and broadcast.

   Refer to <foo> for details.

/psa

---

From: Stephan Wenger <[email-masked]>
Date: Fri, 22 Jun 2012 16:03:32 +0000

Strike "actively".  It's a loophole and adds no value.

I don't know how a "contribution" can be "controlled" by
a patent.  

Using "related" as the broadest possible term that IMO
may just be supported by BCP79:

   "If you believe  that a patent controlled by your employer
   or sponsor is related to your contribution, then you must
   disclose that patent."

I'm quite sure that the term "believe" is appropriate.  It's not
the Note Well that allows trucks go through, it's BCP79.  However,
ignoring my own advice (stick to terminology used in BCP79) I may
settle for "aware of":
   
   "If you are aware of a patent controlled by your employer
   or sponsor that is related to your contribution, then you must
   disclose that patent."

Stephan

---

From: Peter Saint-Andre <[email-masked]>
Date: Fri, 22 Jun 2012 10:31:30 -0600

> Strike "actively".  It's a loophole and adds no value.

Sure.

> I don't know how a "contribution" can be "controlled" by

Sure. I misread your earlier note.

> may just be supported by BCP79:

BCP79 says "covered".

>    or sponsor that is related to your contribution, then you must

Why is it limited to employers and sponsors? I might control it myself
directly, or just know that a patent covers it (BCP79, Section 6.1.1).

Keeping it as short as possible, I suggest:

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

OK, enough wordsmithing from me today...

/psa

---

From: Marshall Eubanks <[email-masked]>
Date: Fri, 22 Jun 2012 13:04:36 -0400

>   patents, you need to disclose that fact.

Shouldn't that be

s/patents/patents or patent applications/

?

Regards
Marshall

---

From: Stephan Wenger <[email-masked]>
Date: Fri, 22 Jun 2012 17:07:04 +0000

Hi Peter,

>directly, or just know that a patent covers it (BCP79, Section 6.1.1).

Section 6.1.1 requires the IPR being controlled by employer or sponsor.
The part you are referring to is gated by section 6.6, which is where
The employer or sponsor control is required.

That leaves us with

   If you are aware of a patent controlled by your employer
   or sponsor that is related to your contribution, then you must
   disclose that patent."

"Disclose that *patent*" instead of "disclose that *fact*", because we
Do not want to see disclosures suing "I'm aware of IPR covering my
Contribution".

My final word for today as well; see you all tomorrow on this fine list :-)

Stephan

---

From: Peter Saint-Andre <[email-masked]>
Date: Fri, 22 Jun 2012 11:07:24 -0600

> s/patents/patents or patent applications/

Yes.

---

From: Barry Leiba <[email-masked]>
Date: Fri, 22 Jun 2012 13:15:41 -0400

> The employer or sponsor control is required.

No, I think PSA's point was that it should be "YOU or your employer or
sponsor."  It's possible that you, yourself, have unassigned patents.

Barry

---

From: Peter Saint-Andre <[email-masked]>
Date: Fri, 22 Jun 2012 11:16:20 -0600

> Section 6.1.1 requires the IPR being controlled by employer or sponsor.

That's not how I read 6.1.1.

   Any Contributor who reasonably and personally knows of IPR meeting
   the conditions of Section 6.6 which the Contributor believes Covers
   or may ultimately Cover his or her Contribution....

Nothing there about employers or sponsors.

   ...or which the
   Contributor reasonably and personally knows his or her employer or
   sponsor may assert against Implementing Technologies based on such
   Contribution, ....

That's one branch in the decision tree, but not the only one.

   ...must make a disclosure in accordance with this Section
   6.

> The employer or sponsor control is required.

Not as I see it ("by the individual"):

   IPR disclosures under Sections 6.1.1. and 6.1.2 are required with
   respect to IPR that is owned directly or indirectly, by the
   individual or his/her employer or sponsor (if any) or that such
   persons otherwise have the right to license or assert.

>    or sponsor that is related to your contribution, then you must

It needs to say "you or..."

> Do not want to see disclosures suing "I'm aware of IPR covering my

Right. :)

> My final word for today as well; see you all tomorrow on this fine list :-)

Mine too. I hope. :)

/psa