Subject: Re: Feedback on ipr-template-05

From: "Valerie See" <[email-masked]>
Date: Wed, 23 Jul 2003 12:41:17 -0700

Pekka - sorry for the delayed reply from the team, but here's our
thoughts,
and thanks for the comments/feedback.

thanks, Val (and the template team)

>    This document is an IETF Patent Disclosure and Licensing
Declaration
> Template and is submitted to inform the IETF of a) patent information
> regarding the IETF document or contribution listed in Section IV, and
b) a
> Patent Holder's intention with respect to the licensing of its
necessary
> patent claims upon approval by the IESG for publication as an RFC of
the
> relevant IETF specification.
>
> ==> "intention" is too mild a word.  How about "commitment" ? (RFC2026
says
> "written assurance")

[[vsee]:  We think this should remain as it is.  While we agree that
you're
correct that "intention" is a more "mild" word, it is used purposefully
here 
because this template covers not just commitments to license, but also
the 
possibility that the Patent Holder declares its intention NOT to
license, 
or defers its licensing decision until a later date.  The more general
word 
is necessary here to reflect the fact that these also are declaration 
options for the Patent Holder.  Note, however, that we do use the word 
"commit" in Licensing Declaration Options d) and e), because there we
are 
specifically talking about what the Patent Holder is or is not willing
to 
commit to in its licensing declaration.  

> ==> the point also holds for section "Licensing Declaration".

[[vsee]:  Same response as above, but even more so here.  We can't
change the
heading to "Licensing Commitment" because that would make it sound like
a
commitment is being made in every case -- which is not the case.  In
some
cases, the Patent Holder will select option e) -- "Unwilling to
Commit".]

> ==> note that "Patent Holder" is not applicable with patent
applications (a
> wording change needed).  Also later in the document; maybe it would be
> easier to use some other term or define the meaning of Patent Holder
to
> include Potential Patent Holders :-/

[[vsee]:  We in the team actually think this is ok, as it is commonplace

in the industry to use the term "Patent Holder" in such forms as a
shorthand 
for a "holder of patents or patent applications".  Examples of this
usage
can be found in the ITU form at
http://www.itu.int/itudoc/itu-t/patents/policy/pd-form.pdf and the
IEEE's
form. But, that said, would it be more easily understood if we were to 
change the heading in Section I to Patent Holder/Applicant 
("Patent Holder")?  This change makes clearer that even if
all the entity holds is a patent application that may contain essential
claims, it is still covered by the definition of "Patent Holder" in the
template.]

>  No actual license is implied by submission of this template.
>
> ==> this seems like a completely bogus sentence.

[[vsee]:  It may seem so, but (as Brian pointed out), this is an
important 
statement to make clear that merely by filling out this template the
Patent 
Holder is not granting a license to anyone; this is only a commitment by
the
Patent Holder to work with applicants when they come and ask for a
license. 
The latter step, that of license "negotiation" and the actual license
itself,
is different from indicating your commitment to license. FWIW, this is
also
seen in other orgs' templates - both the ITU and IEEE templates contain
this 
common statement.] 

>   IV. IETF Document or Working Group Contribution to Which Patent
>   Disclosure Relates
> 
> ==> remove the word "Working Group" or reword.  
> Contributions do not require being made to a working group.

[[vsee]:  We'll make it "Contribution" instead of "Working Group
Contribution" in the next draft.]

> The "Other Designations" field in Section IV may be used to identify
>   an IETF working group contribution (oral or written) other than an
>   Internet-Draft or RFC to which a disclosure is related.
>
> ==> same goes here.

[[vsee]:  Same response as to previous comment.]

>   This document is an Internet-Draft and is in full conformance with
>   all provisions of Section 10 of RFC2026 [i].  
>
> ==> no numbered (even roman numbered :-) refs in the boilerplate

[[vsee]:  Sorry about that. Will fix in the next draft]

> ==> the same goes for the abstract.

[[vsee]:  Same as previous answer.]

>   how to submit a patent disclosure or licensing declaration, please
>   see http://www.ietf.org/ipr-instructions.
>
> ==> note, doesn't exist yet, but probably will at some point.

[[vsee]:  Right.  I assume there is a tie to Scott Bradner's
drafts becoming RFCs so there's no confusion, but maybe Harald 
could give us an update on this?]

> ==> split the references (or rename to normative refs)

[[vsee]: will change to Normative Refs in the next draft.]

> ==> also add the generic Intellectual Property Rights section at the
end..

[[vsee]:  will add in next draft.]

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---

From: Pekka Savola <[email-masked]>
Date: Thu, 24 Jul 2003 08:58:32 +0300 (EEST)

On Wed, 23 Jul 2003, Valerie See wrote:
> you're correct that "intention" is a more "mild" word, it is used
> purposefully here because this template covers not just commitments to
> license, but also the possibility that the Patent Holder declares its
> intention NOT to license, or defers its licensing decision until a later
> date.  The more general word is necessary here to reflect the fact that
> these also are declaration options for the Patent Holder.  Note,
> however, that we do use the word "commit" in Licensing Declaration
> Options d) and e), because there we are specifically talking about what
> the Patent Holder is or is not willing to commit to in its licensing
> declaration.

Note that d) and e) are committals to the *intention* to provide a), b),
or c).  Nowehere in a), b), or c) a stronger word than "intent" is used.  

I think this may be a problem.  That is, if the IPR holder cannot commit 
to certain kind of licensing, it should *not* give an appearance of 
"better terms" than it is ultimately inclined to give.  (E.g. to affect 
the IPR deliberations and decisions in the WG.)

This is why I think the word like "assurance" or "committal" gives exactly 
the *right* kind of impression to the IPR holder.

> change the heading to "Licensing Commitment" because that would make it
> sound like a commitment is being made in every case -- which is not the
> case.  In some cases, the Patent Holder will select option e) --
> "Unwilling to Commit".]

It seems to me that sticking to just one template where we want to stuff 
it all is restricting the applicability and usefulness of such a template.  

Perhaps d) and e) should be kept separate, or licensing terms kept 
separate from the disclosures altogether.

> shorthand for a "holder of patents or patent applications".  Examples of
> this usage can be found in the ITU form at
> IEEE's form. But, that said, would it be more easily understood if we
> were to change the heading in Section I to Patent Holder/Applicant
> ("Patent Holder")?  This change makes clearer that even if all the
> entity holds is a patent application that may contain essential claims,
> it is still covered by the definition of "Patent Holder" in the
> template.]

That's probably enough.

> important statement to make clear that merely by filling out this
> template the Patent Holder is not granting a license to anyone; this is
> only a commitment by the Patent Holder to work with applicants when they
> come and ask for a license.  The latter step, that of license
> "negotiation" and the actual license itself, is different from
> indicating your commitment to license. FWIW, this is also seen in other
> orgs' templates - both the ITU and IEEE templates contain this common
> statement.]

Making this distinction is wrong.  It implies that there is something to 
negotiate.  There is *NOT*, if you've already given RF terms.  In such a 
case, the IPR holder *SHOULD* be given the impression that ticking this 
box implies the license (what other terms are there to settle ??)

-- 
Pekka Savola                 "You each name yourselves king, yet the
Netcore Oy                    kingdom bleeds."
Systems. Networks. Security. -- George R.R. Martin: A Clash of Kings