Subject: IETF 86 IPRbis BOF Minutes

From: Russ Housley <[email-masked]>
Date: Mon, 8 Apr 2013 12:17:47 -0400

http://www.ietf.org/proceedings/86/minutes/minutes-86-iprbis

The minutes have been posted.  Please let me know if any corrections are needed.

Thanks,
  Russ

---

From: Stephan Wenger <[email-masked]>
Date: Mon, 8 Apr 2013 17:26:22 +0000

Hi,
On the second to last paragraph of the notes, which reads in full:
"
Do we want to require provisional patent or pre-issue patent disclosure?
There is a difference between claims and disclosure.  Only claims are the
legal part of the patent.

"

My recollection of the discussion (not verified against the audio):

Scott or Jorge: want to exclude provisionals without claims from
disclosure obligation, because lawyers have difficulty in matching a
claim-less application against a Contribution.

Stephan: want to include those.  Yes, lawyers do have difficulty, because
cannot draw up claim chart, but that's their problem; they need to
identify scope of application even without claims.  Issue with one year
grace period before required disclosure more problematic.

Scott: Scope of patent determined by claims only.

Stephan: true for granted patent, but for applications, you can play with
claims as long as you wish.

Russ: No resolution.

Regards,
Stephan

On 4.8.2013 09:17 , "Russ Housley" <[email-masked]> wrote:

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

---

From: Stephan Wenger <[email-masked]>
Date: Mon, 8 Apr 2013 17:53:59 +0000

Hi,

A minute ago I sent an email suggesting adding a few sentences to the
notes on the subject.  Specifically, in the meeting I asked that a
disclosure obligation should also cover provisional applications without
claims, despite the procedural difficulties some legal departments may
have with this proposed rule.

Here is a real-world example.

Last Friday, we filed for a provisional patent application without claims
covering a contribution to a non-IETF SDO.  It doesn't matter what the SDO
is or what the subject matter of the application may be.  The contribution
in question was submitted for consideration in the SDO over the weekend,
and will be dealt with within a few weeks.  There are a number of reasons
why we decided on a US provisional application (in contrast to a utility
filing in the US or elsewhere), and why we did not include claims.  None
of these reasons do matter here.

I drafted the application by "translating" the contribution language into
patent language, and adding context, background art, patent-style
drawings,  etc.  

This workflow (invention leads to contribution and filing approximately
simultaneously) is, in my experience, not uncommon in standardization,
including IETF standardization.  Mildly put.

Assume the SDO above would have been the IETF.  If the IETF policy were
clear (as proposed by Scott & Jorge) that I (as inventor and contributor,
not to mention drafter of the patent application) do not have a disclosure
obligation until there is an application with claims, I effectively gain a
year for my disclosure.  During that year, an IETF WG can easily decide to
include the subject matter of my contribution (and claim less provisional
application) into a draft, without being timely informed of the
application.  This is not desirable.  It's also not fair to people from
those countries which do not have the option to file their application
without claims in their home legislation, and want to avoid the cost and
hassle to file in an (from their viewpoint) international legislation.

I believe that the onus for deciding whether or not to disclose a claim
less provisional against a Contribution must be on the person who would
(presumably) be required to disclose if there were claims.  That person,
or his/her legal, has at least four choices, which should be enough
options for legal and business to choose from:

1. Disclose under the assumption that claims, once filed will likely cover
the Contribution.
2. Ensure that claims, once filed, do not cover the Contribution, i.e. are
probably narrower than possible or desirable.
3. Do not disclose until claims are filed, but once disclosed, offer
generous terms, or
4. Do not disclose until claims are filed, and once disclose, use terms
that are not viewed as generous by the community.

In cases 1 and 2, the discloser would be within policy.
In case 3, the discloser would not be within policy, but probably not hit
with sanctions by the IETF (although the rightholder may face consequences
if the resulting patent were ever litigated)
In case 4, the discloser would be outside of policy, and IETF sanctions
may apply.

To summarize, I propose to specifically include provisional applications
(regardless of whether they have claims or not) into filings that trigger
a disclosure obligation.

Stephan

---

From: "Lawrence Rosen" <[email-masked]>
Date: Mon, 8 Apr 2013 11:55:42 -0700

Hi Stephan,

You described a chronology in which:

Day 0:  Invention.
Day 1: The inventor files a provisional (or formal?) patent application on
that invention.
Day 2: The inventor submits a proposal to an SDO like IETF which includes
that invention.

Is there any reason for an inventor to do so other than to encourage the
adoption of a patent-encumbered standard for which he may charge royalties? 

A disclosure obligation won't solve that problem and won't unencumber the
standard (assuming the patent is actually issued).

The only solution to this patent trap, and the one we adopted in Open Web
Foundation (with your help!), is a contribution-based patent non-assert. By
making a contribution to a standard, the above inventor would automatically
be licensing his patent for that standard, regardless of when he invented it
or when the patent application was filed.

By the way, that's how Apache software development works, and that's why you
can trust Apache software to be -- to the best of our abilities -- patent
unencumbered!

/Larry

-----Original Message-----
From: Stephan Wenger [mailto:[email-masked]] 
Sent: Monday, April 08, 2013 10:54 AM
To: IETF IPR WG
Subject: disclosure obligation for provisionals without claims

Hi,

A minute ago I sent an email suggesting adding a few sentences to the notes
on the subject.  Specifically, in the meeting I asked that a disclosure
obligation should also cover provisional applications without claims,
despite the procedural difficulties some legal departments may have with
this proposed rule.

Last Friday, we filed for a provisional patent application without claims
covering a contribution to a non-IETF SDO.  It doesn't matter what the SDO
is or what the subject matter of the application may be.  The contribution
in question was submitted for consideration in the SDO over the weekend, and
will be dealt with within a few weeks.  There are a number of reasons why we
decided on a US provisional application (in contrast to a utility filing in
the US or elsewhere), and why we did not include claims.  None of these
reasons do matter here.

I drafted the application by "translating" the contribution language into
patent language, and adding context, background art, patent-style drawings,
etc.  

Assume the SDO above would have been the IETF.  If the IETF policy were
clear (as proposed by Scott & Jorge) that I (as inventor and contributor,
not to mention drafter of the patent application) do not have a disclosure
obligation until there is an application with claims, I effectively gain a
year for my disclosure.  During that year, an IETF WG can easily decide to
include the subject matter of my contribution (and claim less provisional
application) into a draft, without being timely informed of the application.
This is not desirable.  It's also not fair to people from those countries
which do not have the option to file their application without claims in
their home legislation, and want to avoid the cost and hassle to file in an
(from their viewpoint) international legislation.

I believe that the onus for deciding whether or not to disclose a claim less
provisional against a Contribution must be on the person who would
(presumably) be required to disclose if there were claims.  That person, or
his/her legal, has at least four choices, which should be enough options for
legal and business to choose from:

1. Disclose under the assumption that claims, once filed will likely cover
the Contribution.
2. Ensure that claims, once filed, do not cover the Contribution, i.e. are
probably narrower than possible or desirable.
3. Do not disclose until claims are filed, but once disclosed, offer
generous terms, or 4. Do not disclose until claims are filed, and once
disclose, use terms that are not viewed as generous by the community.

In cases 1 and 2, the discloser would be within policy.
In case 3, the discloser would not be within policy, but probably not hit
with sanctions by the IETF (although the rightholder may face consequences
if the resulting patent were ever litigated) In case 4, the discloser would
be outside of policy, and IETF sanctions may apply.

To summarize, I propose to specifically include provisional applications
(regardless of whether they have claims or not) into filings that trigger a
disclosure obligation.

Stephan

---

From: Stephan Wenger <[email-masked]>
Date: Mon, 8 Apr 2013 19:17:23 +0000

Hi Larry,
Please see inline.
Stephan

>adoption of a patent-encumbered standard for which he may charge

I'm not sure of the royalty part; there are many reasons why one wants a
patent in a standard, and collecting rent is only one of them.  But that
aside: no, I believe you are correct that most frequently (though not
necessarily always) the main motivation for a strategy like the one I
described--and you accurately characterized--is to get a patent claim
reading on a future IETF RFC.

That said, in the IETF patent encumbered technologies are, by policy and
in practice, common, and so are RAND commitments.  For example, the
technical area I'm most active in are RTP payload formats.  Many of those
have RAND-based disclosures, which are viewed by a lot of people as being
OK, as the corresponding payloads (media codec formats) are often also
covered by RAND patent claims.

>standard (assuming the patent is actually issued).

True.  However, the working group would know that the Contribution towards
the future RFC includes potentially encumbered material, and can take that
(and other aspects, like the technical desirability of the proposal and
the terms under which the claims are offered, if any) into consideration
when deciding whether to adopt it.  That is the very heart of the IETF's
patent policy.

>or when the patent application was filed.

Man companies offer terms in their IETF disclosures that are approximately
achieving would you consider desirable.  Others, however, do not.  In the
OWF, we started from the outset with the assumption that those not willing
to offer their patent claims under very generous terms are not invited or
allowed to contribute.  In the IETF, we are more inclusive.  I don't
believe you will get consensus for a policy change on such a fundamental
matter.

Stephan

>notes
>and
>drawings,
>application.
>less
>or
>a

---

From: "Lawrence Rosen" <[email-masked]>
Date: Mon, 8 Apr 2013 13:37:19 -0700

Stephan Wenger wrote:
> Man[y] companies offer terms in their IETF disclosures that are
approximately achieving would you consider desirable.  Others, however, do
not.  In the OWF, we started from the outset with the assumption that those
not willing to offer their patent claims under very generous terms are not
invited or allowed to contribute.  In the IETF, we are more inclusive.  I
don't believe you will get consensus for a policy change on such a
fundamental matter.

Stephan, I am under no illusion. I've been on this list for a long time now.
:-) Neither should people be under an illusion that tweaking the existing
IETF patent policies with weak disclosure rules will solve anything
substantial about patents or make IETF standards safer to implement.

By the way, did the disclosure you made in the example you cited earlier
actually disclose anything that would allow patent attorneys or engineers to
assess the actual patent risk? Of course not! Or did you simply say, "I've
got a secret set of future patent claims that I'm possibly going to hold
over your head." I don't mean to hold you up for special scrutiny. I've been
reading the IPR disclosures on IETF lists, and while many "approximately
achieve what [I] consider desirable," many others don't. I don't know for
sure if your disclosure allows me to assess the patent risk from your
technology. As a specific example, is the technology you disclosed in your
provisional application (without claims) safe for Apache to implement after
IETF blesses it with an RFC number?

This is not a meaningless question. Another SDO I work with was also held up
for many months by the disclosure of an Apple patent whose claims had
several times been rejected by the USPTO and were being re-drafted for the
umpteenth time by Apple to try to pass muster. How long must an SDO wait to
be confident that it can recommend a technology for royalty-free
implementation? Disclosure alone is useless to answer that question.

/Larry

-----Original Message-----
From: Stephan Wenger [mailto:[email-masked]] 
Sent: Monday, April 08, 2013 12:17 PM
To: [email-masked]; 'IETF IPR WG'
Subject: Re: disclosure obligation for provisionals without claims

Hi Larry,
Please see inline.
Stephan
<snip>

---

From: Stephan Wenger <[email-masked]>
Date: Mon, 8 Apr 2013 21:51:23 +0000

Hi Larry,

On 4.8.2013 13:37 , "Lawrence Rosen" <[email-masked]> wrote:

>[...]
>assess the actual patent risk? Of course not!

If you are referring to my example, that was related to a non-IETF SDO
with completely different disclosure rules.

If you are referring to previous disclosures I made in the IETF, then, I
believe, you are incorrect with your broad "of course not".  First, all
organizations for which I worked and/or made disclosures for had a policy
to include references to the patent docs in question.  Including
provisionals.  And they did, at least if memory serves (I would not rule
out that there were a few cases where such policies were not followed, but
if there were, it would not have been the norm).  Further, all disclosures
also included an identification of the contribution, i.e. the draft
filename.  With this information, a patent attorney can--with effort--find
the application or patent, find the draft, read both, draft a claims
chart, and make a risk assessment.  If you don't like the "with effort"
part--well, last time I checked my job description, nowhere it said that
my job duties include to make the life of the competition simpler...
(That said, I'm also personally on record with statements--both email and
at a recorded microphone--that matched well defined sections or mechanisms
of drafts with patent claims.  However, we should acknowledge that doing
so is generally unwise for the typical IETF participant.  In my case it
was possible because of a combination of qualification, firsthand
knowledge, and authorization by my employer.)

>Or did you simply say, "I've

Again, that technology is not related to IETF work.  If it were, then no,
it would not be Apache-safe.

>implementation? Disclosure alone is useless to answer that question.

I do not see how you could EVER be safe, short of an OWF-style of
portfolio-based non-assert covenant--which is not what THIS community
wants, IMO--even if others do.  The best you can hope for is that you have
no knowledge to the contrary.

---

From: John C Klensin <[email-masked]>
Date: Mon, 08 Apr 2013 18:07:09 -0400

--On Monday, April 08, 2013 21:51 +0000 Stephan Wenger
<[email-masked]> wrote:

>> for many months by the disclosure of an Apple patent whose
>> claims had several times been rejected by the USPTO and were
>> being re-drafted for the umpteenth time by Apple to try to
>> pass muster. How long must an SDO wait to
>> be confident that it can recommend a technology for
>> royalty-free implementation? Disclosure alone is useless to
>> answer that question.

> I do not see how you could EVER be safe, short of an OWF-style
> of portfolio-based non-assert covenant--which is not what THIS
> community wants, IMO--even if others do.  The best you can
> hope for is that you have no knowledge to the contrary.

For better or worse,  this is one of the advantages of the IETF
policy relative to those of other SDOs whose policies I gather
Larry prefers. Because the IETF doesn't "recommend a technology
for royalty-free implementation" or require that technologies be
appropriate for such recommendations, WGs can make risk
assessments and judgment calls about whether and how long to
wait.  So there is no "held up for many months" by the action of
a patent applicant even though a WG could made a decision to
hold itself up.

Of course, the IETF policies have disadvantages as well (as
Larry and a few others regularly remind us).  But they do have
some advantages.

best,
   john

---

From: "Lawrence Rosen" <[email-masked]>
Date: Mon, 8 Apr 2013 15:29:56 -0700

John Klensin suggested:
> Because the IETF doesn't "recommend a technology for royalty-free
implementation" or require that technologies be appropriate for such
recommendations, WGs can make risk assessments and judgment calls about
whether and how long to wait.  

What WG is actually capable of that? Does it bother you that those "risk
assessments and judgment calls" about patents are made in the utter absence
of actual knowledge about what claims may eventually be granted?

Only a promise not to assert patent claims is worth relying on -- and is
independent of what the patent claims actually end up saying after they
survive the USPTO obstacle course. Disclosures of unissued patents are
toilet paper (in all senses of that phrase) for risk assessment purposes.
They have offensive purposes only.

/Larry

-----Original Message-----
From: John C Klensin [mailto:[email-masked]] 
Sent: Monday, April 08, 2013 3:07 PM
To: Stephan Wenger; [email-masked]; 'IETF IPR WG'
Subject: Re: disclosure obligation for provisionals without claims

--On Monday, April 08, 2013 21:51 +0000 Stephan Wenger <[email-masked]>
wrote:

>> This is not a meaningless question. Another SDO I work with was also 
>> held up for many months by the disclosure of an Apple patent whose 
>> claims had several times been rejected by the USPTO and were being 
>> re-drafted for the umpteenth time by Apple to try to pass muster. How 
>> long must an SDO wait to be confident that it can recommend a 
>> technology for royalty-free implementation? Disclosure alone is 
>> useless to answer that question.

> wants, IMO--even if others do.  The best you can hope for is that you 
> have no knowledge to the contrary.

For better or worse,  this is one of the advantages of the IETF policy
relative to those of other SDOs whose policies I gather Larry prefers.
Because the IETF doesn't "recommend a technology for royalty-free
implementation" or require that technologies be appropriate for such
recommendations, WGs can make risk assessments and judgment calls about
whether and how long to wait.  So there is no "held up for many months" by
the action of a patent applicant even though a WG could made a decision to
hold itself up.

Of course, the IETF policies have disadvantages as well (as Larry and a few
others regularly remind us).  But they do have some advantages.

best,
   john

---

From: Donald Eastlake <[email-masked]>
Date: Mon, 8 Apr 2013 22:24:00 -0400

The concept that the IETF disclosure rules wouldn't apply to
provisionals is so bizarre that it never even occurred to me before. I
have filed disclosures based on provisionals.

An urgent solution to a protocol problem that could be implemented in
software could be both published as a standards track RFC and
significantly deployed in less than the year during which an
inventor's rights and priority of filing are protected by a
provisional.

I'm not a lawyer but I believe that it is still the case that, in
principle, a provisional needs to be such that it would inform one
skilled in the art as to what the invention was and must give the best
implementation known to the inventor. Of course I think the patent
system is broken and most of its principles are interpreted so as to
be somewhat meaningless but in those aspects there isn't much
difference between a provisional and a utility filing.

Thanks,
Donald
=============================
 Donald E. Eastlake 3rd   +1-508-333-2270 (cell)
 155 Beaver Street, Milford, MA 01757 USA
 [email-masked]

---

From: Christian Huitema <[email-masked]>
Date: Tue, 9 Apr 2013 06:17:51 +0000

> Day 1: The inventor files a provisional (or formal?) patent application on that invention.
> Day 2: The inventor submits a proposal to an SDO like IETF which includes that invention.
>
> Is there any reason for an inventor to do so other than to encourage the adoption of a patent-encumbered standard for which he may charge royalties? 

Yes there are in fact many reasons to do that, without charging royalties. The main one is the "preemptive strike." If you make it first to the patent office, then you can breathe a bit more easily, as the chances that someone sues you on the technology are now much lower. The second popular reason is "reciprocal licensing." If your patent reads on something other folks want, you can achieve a form of "mutually assured destruction," another way to breathe more easily. Both reasons fall in the area of defensive patenting. Then there is pride, i.e. making it well know that your company in fact created that technology, and then gave it to the world. 

The good part about that is that, with proper licensing, the implementers of the standard are often better off than if there had been no patenting at all. 

Of course, the details are in the fine print...

-- Christian Huitema

---

From: Brian E Carpenter <[email-masked]>
Date: Tue, 09 Apr 2013 08:13:26 +0100

>From a practical point of view, for working engineers, the typical
IPR disclosure to the IETF doesn't contain even as much information
as a provisional patent application without claims, and in any case,
reading the claims is usually quite unenlightening. So from the IETF's
point of view, there is *no* practical difference - a WG has to decide
on the basis of common sense and plain English whether to use a
potentially encumbered technology.

Therefore, as far as I can see, the IETF should treat applications
without claims exactly the same as applications with claims, and
require disclosure.

It is not our problem if this gives corporate IPR lawyers heartburn.

Regards
   Brian Carpenter

---

From: John C Klensin <[email-masked]>
Date: Tue, 09 Apr 2013 08:00:35 -0400

--On Monday, April 08, 2013 15:29 -0700 Lawrence Rosen
<[email-masked]> wrote:

>...
> Only a promise not to assert patent claims is worth relying on
> -- and is independent of what the patent claims actually end
> up saying after they survive the USPTO obstacle course.
>...

Larry,

It seems to me that you have now said this and things that are
nearly equivalent in dozens of different ways over the years.
For all I know (i.e., I'm neither a lawyer nor a patent expert),
you may be absolutely correct.  

Others have asserted that, in the presence of patents that are
actually applied for, held, and controlled by companies, any
requirement for disclosure that falls on individuals and what
they reasonably know rather than on company commitments is
ultimately useless, especially against a company with motives
and skills to attack the system.  For all I know (see above),
they are correct too. 

Nonetheless, the IETF has repeatedly decided to rely on
disclosure by individual participants and to make no
requirements about license terms (or commitments to not assert
claims).  The IETF has also chosen to assume that working groups
can, even with necessarily incomplete information, balance the
risks and costs of a patent being asserted against the value of
the technology relative to other choices.  Those decisions
involve risk and cost-benefit assessments of their own, notably
about the costs to the IETF's model for producing standards of
shifts toward a company participation model and of excluding
possible technology choices because they are encumbered.  

I believe the IETF position also includes some understanding
that there is no way to completely protect against a
patent-based attack on a standardized technology; one can only
try to protect against participation in the standards process
generally or advocacy of a technology for standardization that
is known (or hoped) to be encumbered.  If someone's motivation
is really offensive (in both senses of the term), any rules we
were inclined to adopt (including either those you would prefer
about licensing and/or ones about company participation) would
merely force them to watch what we were doing more indirectly or
from a greater distance because logic suggests that we can't
impose a requirement on any individuals or companies who are not
"participating" or formally observing the process with our
express permission.

For all I know (see above) that set of decisions on the IETF's
part is hopelessly naive and perhaps even plain stupid.  They,
and perhaps most of the alternatives, may be establishing
guidelines for good practices for those from whom we really
don't need protection and providing us little or no protection
against those from whom we do.  But I don't think your (or my,
or anyone else's) repeating the same things are going to change
those policies.

Personally and to take this disclosure obligation as an example,
and as something of a standards expert even if not a lawyer or
patent expert, I have mixed feelings about where we are headed.
On one hand, I think that the participation-based model the IETF
is trying to use requires as much information as we can
reasonably get.  From that point of view, knowledge of a
provisional application tells us that someone is poking around
the possibility of making patent claims in a particular area.
That is information even if it is nowhere near complete.   With
the understanding that real examples are likely to be less
clear, if a WG has a choice between a new, possibly better,
technology and an old and established one, looks at a disclosure
of a provisional application for the former, and decides it
isn't enough better to be worth the worry, it has made a
decision identical to what the policies you advocate would
probably lead.  On that basis, I want the policy to be as close
to "anything you know must be disclosed" as we can get it.

On the other, I think much of this disclosure stuff is just a
surrogate for a principle that one must not try to influence a
developing standard in the direction of encumbered technology,
especially encumbered technology in which one has an interest,
without full disclosure.  Probably its opposite should be part
of the principle too -- if someone is so opposed to patents and
licenses that they prevents clear thinking about the underlying
technologies and tradeoffs, that should be disclosed too.   If
"no influence without disclosure" is actually the underlying
principle, or even a collateral one to whatever advantages
disclosure has in its own right, I think the document would be
strengthened by being explicit about it.  And maybe we should be
looking at each provision of the disclosure rules with regard to
whether it advances that principle or is just an added burdens
on participation.

   john