Subject: substantive comments on Technology Rights

From: Scott W Brim <[email-masked]>
Date: Wed, 19 Feb 2003 23:30:33 -0500

> Network Working Group                                        S. Bradner
> Internet-Draft                                               Harvard U.
>                                                                  Editor
>                                                           February 2002
> 
>             Intellectual Property Rights in IETF Technology
> 
>                    <draft-ietf-ipr-technology-rights-01.txt>

>  6.2.1 Timing of disclosure about a contribution described in section
>     6.1.1
> 
>  The person or the organization which claims the IPR must submit an
>  IPR disclosure at the same time that the contribution is made

This requirement (a "must") is not practical.  Consider that
contributions may be made by "any means including electronic or spoken
comment".  Do we really expect people to disclose IPR as they speak?
Consider also that a corporate IPR department that wants to disclose IPR
in good faith cannot meet this standard (unless it is limited to written
submissions and the format for the written submission template requires
a statement).  Contributors should be encouraged to disclose early but
should be given a clear 'no later than' date by which they 'must'
submit.  That date should be based on some specific event in the
consideration for advancement of a standard.

> 6.4  What must be in a disclosure?
> 
>    The disclosure must be as specific as reasonably possible both in the
>    IPR claim that is being made and as to the IETF contributions to
>    which the claim applies.  The disclosure should list the registration
>    numbers of any patents and the file numbers of any patent
>    applications which instantiate the IPR claims being made.  If the
>    claim is based on unpublished patent applications then that should be
>    stated. The disclosure should also list the specific IETF documents
>    or activity affected and what sections of any documents are affected.
>    (SHOULD WE PUT UP A DISCLOSURE TEMPLATE?)

Yes we should have a template, like IEEE and ITU.  But it is not
practical to require such specificity as the "sections of any documents
that are affected".  The burden on corporate IPR departments (to
identify specific paragraphs and update as changed) outweighs the
usefulness of this information to the WG.  This is not a clarification
of any existing requirement, nor is it consistent with current practice.

> 6.5  What rights must be detailed in a disclosure?
> 
>    Since IPR disclosures will be used by IETF working groups during
>    their evaluation of alternative technical solutions it is desirable,
>    though not required, that an IPR disclosure include information about
>    licensing of the IPR in case implementation of the technology
>    described in the final RFC is judged to require a license.

Some disclosure of licensing terms (RAND, free, not) should be required.
See 3(c) above -- this info is certainly expected, and always has been
expected.  What good is a disclosure of IPR without this info?

_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: Scott W Brim <[email-masked]>
Date: Mon, 24 Feb 2003 14:11:43 -0500

First, re Section 6.4:

  Current:

     The disclosure must be as specific as reasonably possible both in
     the IPR claim that is being made and as to the IETF contributions
     to which the claim applies.  The disclosure should list the
     registration numbers of any patents and the file numbers of any
     patent applications which instantiate the IPR claims being made.
     If the claim is based on unpublished patent applications then that
     should be stated. The disclosure should also list the specific IETF
     documents or activity affected and what sections of any documents
     are affected.  (SHOULD WE PUT UP A DISCLOSURE TEMPLATE?)

  First, listing specific section numbers means that all disclosures
  must be reviewed every time a new draft version comes out.  It's a
  nice idea but not really practical.  I suspect that in the
  overwhelming majority of cases the section numbers aren't necessary to
  know where/how a patent disclosure is relevant, anyway.  
  
  I suggest the following:

    The disclosure should list the numbers of any issued or published
    patents and indicate whether the claim is based on unpublished
    patent applications.  The disclosure should also list the specific
    IETF documents or activity affected.  An Internet Draft must be
    referenced by specific version number.  If it is expected that the
    disclosure will also be relevant to future versions of an Internet
    Draft, that can be noted, for example by saying "It is expected that
    this disclosure will also cover future versions of this Internet
    Draft".

  Note this is consistent with 2026 and prior IETF practice.  Requiring
  more specificity could be considered to be a new practice, not a
  clarification of existing practice.

Re Section 6.5:

  Current:

    Since IPR disclosures will be used by IETF working groups during
    their evaluation of alternative technical solutions it is desirable,
    though not required, that an IPR disclosure include information
    about licensing of the IPR in case implementation of the technology
    described in the final RFC is judged to require a license.  It
    should be noted that disclosures without licensing statements are
    likely to discourage a working group from adopting the technology.

  Section 2.2 is more specific than this, is in line with historical
  practice, and can be used to beef it up a bit.  Try this -- noting
  also the presence of "should" and "whether".  The "it should be noted"
  which was at the end didn't add any clarity and is the kind of
  philosophical content which we sort of tacitly agreed not to encourage
  a few days ago.

  Proposal:

    Since IPR disclosures will be used by IETF working groups during
    their evaluation of alternative technical solutions, an IPR
    disclosure should include information about licensing of the IPR in
    case implementation of the technology described in the final RFC is
    judged to require a license.  Specifically, it should indicate
    whether, upon approval by the IESG of the relevant Internet
    standards track specification(s), all persons will be able to obtain
    the right to implement, use, distribute and exercise other rights
    with respect to an Implementing Technology under openly specified,
    reasonable, non-discriminatory terms.  

Re 6.6:

  Current:

    Disclosures are required whenever enforcement of the IPR claim in
    question would directly or indirectly benefit the individual or
    their employer or sponsor (if any) and where enforcement of the
    claimed IPR would have any effect on the ability to implement a
    technology under discussion in the IETF.

  "Benefit" is extremely hard to define, as is "any effect".  Keep it
  simple here, and give the lawyers less to argue about.  Keep the
  issues in the IPR claims themselves.  "Practice" is a well-understood
  legal term.

  Proposal:

    Disclosures are required whenever a license under any claims of the
    patent or patent application would be required to practice the
    standard.  

.. swb