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

From: "Bob Wyman" <[email-masked]>
Date: Wed, 12 Feb 2003 13:51:50 -0500

It has been my practice for some time to scan new USPTO patents
when they are issued on Tuesdays and patent applications when published
on Thursdays. Recently, in an effort motivated by a desire to be
helpful, I began publishing notes on what I had found to the SIMPLE
mailing list. This has resulted in my being accused of "spamming" the
group and suggestions that if I insist on mailing such things, I should
not send them to the WG but rather use established IETF procedures. My
difficulty is that the only established procedures for warning the IETF
about potential IPR problems seem to apply only to the owners of those
rights -- there seems to be no procedure for a third-party to warn a WG
that their actions may infringe on claims held by someone else.
	It has been suggested that I could notify appropriate AD's of
potential problems so that they might contact the IPR owners and inquire
as to their intentions. However, since there are as many as a dozen new
patent applications just in the space of instant messaging and PubSub
that I watch most closely, it seems inappropriate for me to attempt to
burden the AD in such a way.
	The ipr-wg document: draft-ietf-ipr-wg-guidelines-00.txt, on
pages 8,9 identifies a number of times that an IETF Working Group should
"consider" IPR. The document says that "A working group's job will be a
lot easier if IPR details are discovered early." However, there is no
definition of what it means to "consider." Can you provide guidance? 
	I'll give an example here to show what I was trying to
accomplish. The SIMPLE group is working on instant messaging standards.
A sometimes requested, but not currently part of SIMPLE, capability is
the well known "Sally is typing a message..." activity monitoring
statement employed by some IM systems to aid in conversational flow.
Microsoft on Tuesday was issued a patent on the process for implementing
such "activity monitors." I would like to inform the SIMPLE group that
consideration of this method in the future might result in infringement
of Microsoft's patent. I do not know if SIMPLE will reconsider
implementing this in the future and I don't know if Microsoft has any
intention of enforcing their patent rights in this area. I simply want
the group to know of that if the issue arises, they should probably
contact Microsoft before going to far into it. What do I do?

		bob wyman

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From: Randy Bush <[email-masked]>
Date: Wed, 12 Feb 2003 11:07:10 -0800

very good point.  thanks.

of course, i have no answer.  i would comment that telling the wg
chair(s) scales a bit better than telling the area directors.  but,
like all strategies, it might have its problems.

randy

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From: Scott W Brim <[email-masked]>
Date: Wed, 12 Feb 2003 14:55:03 -0500

My current opinion:

- 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.

- 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.

- 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.
  
- 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".  

- Don't send separately to the ADs.  They'll know about it.

- Other people will have better suggestions.

swb

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From: Harald Tveit Alvestrand <[email-masked]>
Date: Thu, 13 Feb 2003 14:07:30 +0100

--On onsdag, februar 12, 2003 13:51:50 -0500 Bob Wyman <[email-masked]> wrote:

> mailing list.

Bob,

if I do one kind of thing many times over, one thing I've found helpful in 
the past in order to avoid accusations of "spamming" is to put the real 
thing up on a web page, and just send occasional (no more than weekly, more 
often monthly) summaries.

Three advantages:

- less mail
- all the stuff is in one place, not just last week's findings
- you have the chance to update the stuff if you got it wrong

of course, others' advice on filing official statements, but only after 
chatting with the chairs and being sure it matters, is good advice - but 
just pointing out what's already public info seems like a good service to 
the community - no matter what the IETF IPR rules say.

              Harald

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From: "Bob Wyman" <[email-masked]>
Date: Thu, 13 Feb 2003 19:03:58 -0500

Harald Tveit Alvestrand wrote:
> put the real thing up on a web page, and just send occasional 
>(no more than weekly, more often monthly) summaries.
	I have, in fact, created a web site (http://www.pubsub.org) for
precisely this purpose although I'm not yet happy with its structure,
etc. The idea is to create a forum in which people can comment on
specific patents, collect references to prior art, discuss implications,
etc. While there are many sites that discuss or flame about general
patent issues, I haven't been able to find one that organizes discussion
around specific patents. Hopefully, pubsub.org will eventually become
something generally useful and will provide an outlet for discussions of
patents that might otherwise, inappropriately, be held on WG lists.
(Note: If you have any ideas on how to improve the structure or
presentation of the site, please let me know.)
	I am still left, however, with the question of if and how best
to notify WG's, etc. of potentially important patents or applications
that may impact WG work...

		bob wyman