Subject: RE: Who do I tell? (A third-party finds IPR that could be problem atic...)

From: [email-masked]
Date: Wed, 12 Feb 2003 22:09:36 -0500

Having been through more than my share of 3rd party IPR issues ...

> - There is a procedure for third-party notification.  It's the same as
>   first-party notification, although the text of the disclosure will
>   read a little differently.

I'm not sure this is a good idea.  In IP Storage (ips), someone discovered
a patent owned by my employer and posted to the list that this patent
made the entire WG's effort pointless.  Subsequent list discussion
suggested that the discoverer may have overestimated the scope of
the patent.  IMHO, the list was a reasonable way to deal with this
patent, and a suitable first-party IPR notification was filed.  Life
would have been considerably more difficult if the original discoverer
had sent in an overbroad third-party notification that resided
permanently on the IETF's web site.

I'm concerned that third-party notifications are liable to potential
abuse as a means to make potentially unfounded allegations about holders
of patents.  At a minimum, I'd like to see third-party notifications
clearly segregated and marked as such on the IETF web site so that
one can easily tell which is which.

> - You should disclose only if you have real concerns that a license may
>   be required to implement and deploy technology under consideration in
>   the IETF.  If you have done your homework, or if you don't have a
>   strong feeling that there might be a problem, don't send anything.
>   If the WG is not working in the area, I would not bother them.

I presume Scott meant "haven't done your homework".  If one is getting
strong feedback from the list that the patent postings are "spam", that's
a good indication that the patents and applications in question are not
relevant.  In the specific example, a patent on a feature that a WG is
not currently considering ought not to be mentioned until the WG starts
to actively consider the feature - this is better deferred until when
the issue arises rather than being raised in advance just in case -
I would have been rather displeased if someone had undertaken to post
every storage-related or storage-networking-related patent and patent
application to the ips list just in case the WG might go there.

> - It doesn't matter if the IPR claimant has an intention of enforcing
>   the patent -- as long as there's a clear impact, people should know.
>   Licensing terms are a separate issue as well.

Absolutely.

> - It also makes sense to me to send a message to the working group
>   pointing it to the official disclosure.  You should include a
>   substantive justification for why you think the newly discovered IPR
>   claim is a problem.  I would use consistent subject lines, like "I
>   believe patent #xyzzy impacts section foo.bar of draft mumble".  

I think exercise of judgment is called for here.  In IP Storage,
several security-related patents were brought to the WG chairs'
attention in private.  This was useful in that it enabled the chairs
to (with AD knowledge and support) engage the patent holders in private,
and in at least one case resulted in significantly better results than
a public discussion of the potential applicability of the patent would
likely have yielded.  Talking to the WG chair(s) before posting to the
list seems generally advisable.

Thanks,
--David
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David L. Black, Senior Technologist
EMC Corporation, 176 South St., Hopkinton, MA  01748
+1 (508) 293-7953             FAX: +1 (508) 293-7786
[email-masked]        Mobile: +1 (978) 394-7754
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---

From: Brian E Carpenter <[email-masked]>
Date: Thu, 13 Feb 2003 13:46:32 +0100

IMHO this is Mission Impossible and we shouldn't kid ourselves that
there is any chance of catching all potential 3rd party patents. Also,
if we catch them, we can't guarantee to write useful standards that
bypass them, especially in the many cases where there is so much
prior art that the validity and applicability of the patent are
very much in doubt. In any case, the IETF isn't the place to decide
the merits of each patent and whether or not it is trumped by
prior art.

So, I tend to agree with David that objective discussion with the WG
chairs or in the WG is the best first step, when someone happens to 
spot a patent that obviously affects a current draft. I think a 3rd 
party notification should be a last resort for current drafts. 

But I also think we shouldn't get in a mode where we change specifications
(probably for the worse) every time there is a whiff of a 3rd party
patent, unless it is known that the patent owner doesn't offer
reasonable conditions. Our industry is littered with patents and there
is no way to avoid them.

Bottom line is that I don't really see any need to change any rules.
I suggest some words in Section 5.2 of draft-ietf-ipr-wg-guidelines-00,
along the lines of 
 Anyone who discovers a published and relevant IPR claim that has not 
 already been disclosed formally or informally to the working group is
 advised to discuss it promptly, first with the WG chairs and then, 
 if appropriate, with the whole WG and the Area Directors. 

    Brian

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From: Keith Moore <[email-masked]>
Date: Thu, 13 Feb 2003 09:01:39 -0500

> reasonable conditions. 

I sympathize with the desire for stability, but I don't know why a whiff of a
3rd party patent is any less of a threat, or any less deserving of a change,
than the whiff of a patent from a participant's employer.

My personal take on patents (regardless of whose they are): As an IETF
participant, I want to know about them if they could possibly relate to the
topic at hand.  But I don't want extended discussion of them to clog up
working groups, mostly because WG members tend to lack sufficient expertise at
interpreting patents and patent law for discussions to be of much use.  

The normal response to a patent threat should be: here's a URL of the patent
[application] everybody go off and read this for yourself if you wish, consult
your legal counsel, etc.  If you and/or your counsel believe that the patent
would prevent or discourage implementation of the protocol under discussion,
it's permissable to say succinctly "I don't support this because I believe it
is encumbered by a patent" or "I propose this change to avoid patent
problems".  Or alternatively, "I don't believe that patent XXX is a problem". 
Or even "here is a URL containing an argument as to why this patent is
invalid."  Just try to keep the discussion off the list.

Keith

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From: Brian E Carpenter <[email-masked]>
Date: Thu, 13 Feb 2003 16:50:52 +0100

Keith, I agree with you completely. Indeed, the thing to avoid is
a WG getting wedged over an ill-defined patent concern.

   Brian

-- 
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
Brian E Carpenter 
Distinguished Engineer, Internet Standards & Technology, IBM 
On assignment at the IBM Zurich Laboratory, Switzerland
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