Subject: Expired patents

From: Brian E Carpenter <[email-masked]>
Date: Fri, 20 Jun 2014 13:24:34 +1200

I was wondering whether there is a need for an occasional sweep
over the IPR disclosures to tag all those that cite expired
patents. We've been at this long enough that it is starting to
be relevant. For example, I just noticed that IBM's NAT patent
(US5371852) must have expired by now. It was discosed in
https://datatracker.ietf.org/ipr/119/
and
https://datatracker.ietf.org/ipr/208/

Regards
   Brian

---

From: Dave Crocker <[email-masked]>
Date: Thu, 19 Jun 2014 19:27:46 -0700

On 6/19/2014 6:24 PM, Brian E Carpenter wrote:
> (US5371852) must have expired by now. 

That is certainly a reasonable suggestion, but I suspect it can
sometimes carry unfortunate complexities.

For example imagine someone filing a continuing patent but not updating
the IETF's records. There would be relevant IPR encumbrance but we
wouldn't necessarily know it.

No matter what we do or don't do, the record won't be perfect, but we
probably should be cautious about having our records move from
'encumbered' to 'not encumbered' through any simple process such as a
timeout.

d/

-- 
Dave Crocker
Brandenburg InternetWorking
bbiw.net

---

From: "Martin J. Dürst" <[email-masked]>
Date: Fri, 20 Jun 2014 15:21:35 +0900

I agree with Dave about being cautious. Of all the hassles with patents, 
figuring out whether a declared patent itself is still valid or is 
expired is the least of worries.

We have the patent declaration mechanism because we want patent holders 
to declare favorable licencing conditions (royality free,...) and 
because we want everybody to know about (potentially) relevant patents. 
Adding patent expiry information doesn't add a lot of value to this.

Up to now, as far as I understand, we (i.e. the IETF) don't provide any 
kind of additional information whatsoever because such information is at 
risk of being incorrect or incomplete. For patent expiry, that risk is 
low, but it might start us down a slippery slope we better avoid.

Regards,   Martin.

---

From: Stephan Wenger <[email-masked]>
Date: Fri, 20 Jun 2014 07:07:00 +0000

Hi,

>wouldn't necessarily know it.

That¹s a bad example.  A continuation inherits the priority date of the
parent, and expires at the same time as the parent (broadly put, and in
most but not all countries, 20 years after the oldest priority date).

Stephan

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

---

From: Stephan Wenger <[email-masked]>
Date: Fri, 20 Jun 2014 07:14:19 +0000

Hi,

>https://datatracker.ietf.org/ipr/208/

The expiration date of a patent is sometimes surprisingly difficult to
identify.  In the US, for example, relevant factors include earliest
priority date, filing date, grant date, and patent term adjustment.  The
latter can be (and routinely is in certain fields) challenged after issue,
and not infrequently adjusted upwards, with the result that one needs to
study the file wrapper and correction certificates to identify the
expiration date, and not only the cover page of the patent.  That¹s too
hard for an IETF automated process to do.  It¹s probably too hard for the
secretariat.  Arguably, you want a patent practitioner do it.  As a
consequence, if the tagging were based on a timeout mechanism, then it
should be labelled such.  It would be unwise to create the impression a
patent were expired, without having obtained an opinion from a person
qualified or authorized.

What we could do is request/require rightholders to update their IPR
disclosures when the status of the patent changes.  That covers not only
expiration due to age, but also (and perhaps more importantly)
invalidation, unenforcability, and abandonment.  As this puts a lot of
work on the righholders, not to mention legal risk (false marking), I
don¹t give such a proposal a large chance of success, though.

Finally, let me note that a good percentage (a majority?) of the IETF¹s
IPR disclosures are promising licensing terms for all patents of a
rightholder¹s portfolio that is necessary to practice an IETF
contribution.  (Example from a recent Cisco IPR declaration: "Cisco is the
owner of US Patent No. 7,343,485 and US Patent Application Serial No.
10/971,523 relating to the subject matter of "SAVI Solution for DHCP"
<draft-ietf-savi-dhcp-26>.  If technology in this document is included in
a standard adopted by IETF and any claims of any Cisco patents are
necessary for practicing the standard, [...]²)  For those, there is no
expiration date to worry about.

To summarize, I like Brian¹s idea, as it potentially makes the patent
database more useful, but it¹s much harder to implement than it looks.

Stephan

---

From: Dave Crocker <[email-masked]>
Date: Fri, 20 Jun 2014 06:32:27 -0700

On 6/20/2014 12:07 AM, Stephan Wenger wrote:
> That¹s a bad example.

On the other hand, it nicely demonstrates the challenge of our making
casual assertions (or decisions based on them) about this topic.  Not
that we didn't already know that...

d/

---

From: todd <[email-masked]>
Date: Fri, 20 Jun 2014 06:45:32 -0700

Actually doing anything more than the original posting could create a 
legal requirement for much more work to be done on the part of the IETF.

Also those same patents on network IP may also control the operations of 
the IETF which it is NOT immune to, in fact its work in creating 
standards and then using them itself makes it subject to those same 
patents. This isnt the world of the 107 exemption.

Todd Glassey

On 6/19/2014 11:21 PM, "Martin J. Dürst" wrote:
> I agree with Dave about being cautious. Of all the hassles with 
> patents, figuring out whether a declared patent itself is still valid 
> or is expired is the least of worries.
>
> We have the patent declaration mechanism because we want patent 
> holders to declare favorable licencing conditions (royality free,...) 
> and because we want everybody to know about (potentially) relevant 
> patents. Adding patent expiry information doesn't add a lot of value 
> to this.
>
> Up to now, as far as I understand, we (i.e. the IETF) don't provide 
> any kind of additional information whatsoever because such information 
> is at risk of being incorrect or incomplete. For patent expiry, that 
> risk is low, but it might start us down a slippery slope we better avoid.
>
> Regards,   Martin.
>
> -----
> No virus found in this message.
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>
>

---

From: "GTW" <[email-masked]>
Date: Fri, 20 Jun 2014 10:17:10 -0400

agree with those who have observed the difficulties were IETF to
"tag all those that cite expired patents"

see for example  History of the Patent Policy of the American National 
Standards Institute at 
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2451165

clip

"1) An SDO needs to protect itself from involvement in litigation about the 
accuracy and completeness of statements and about infringements of patents 
due to use of the standard."

George T. Willingmyre
President GTW Associates

-----Original Message----- 
From: Brian E Carpenter
Sent: Thursday, June 19, 2014 9:24 PM
To: IPR WG
Subject: Expired patents

Regards
   Brian

---

From: John C Klensin <[email-masked]>
Date: Fri, 20 Jun 2014 11:27:02 -0400

--On Friday, June 20, 2014 10:17 -0400 GTW
<[email-masked]> wrote:

> see for example  History of the Patent Policy of the American
> National Standards Institute at
> "1) An SDO needs to protect itself from involvement in
> litigation about the accuracy and completeness of statements
> and about infringements of patents due to use of the standard."

George,

Thanks very much for this and even more so for the referenced
paper and the historical evolution trace at
http://www.gtwassociates.com/answers/EvolutionANSIPolicy.html.
I have hoped for many years that someone with the competence to
do so would draw all of that information together in a coherent
way.  What is most attractive to me about these notes is that
they are compiled from the standpoint of standards developers
and standards users, not legal hairsplitting or excursions into
theoretical attacks under various laws.

I strongly recommend that material to anyone who wants to make
comments or suggestions about IETF (or other SDO) patent policy.
A general understanding to that material could save all of us a
lot of time.

A few specific observations, fwiw:

(1) While most of the principles are generally applicable, some
of this material -- probably most of it other than the ISO/IEC
[1] and IETF [2] evolution notes -- is a little bit US-centric.
If you, or someone else, could find or develop parallel
materials for a few bodies with their primary focus on other
jurisdictions, it might add to the general understanding.  ETSI,
3GPP, CENELEC, JIS, GOST, and CBEMA strike me as particularly
interesting possibilities but others might be equally
interesting.

(2) As you know (but some participants in this list may not or
may periodically forget), ISO rules/directives are somewhat
different from the rules/directives applicable to ISO/IEC joint
work (i.e., in JTC 1) and the entanglements of the latter with
ITU-T under the Joint Development Agreement applicable to
certain networking standards.  Similarly, when I last looked
closely at it, the Joint Development Agreement did not require
that ITU-T apply the same rules to Draft Recommendations and
Recommendations that were and were not covered by that
agreement.   I think it would be helpful if you made those
distinctions explicit and either identified the differences or
noted that there weren't any as of particular dates or versions.

(3) More or less the same observation applies within the ANSI
sphere: my recollection is that several ASDs (formerly ASCs)
adopted policies that were more restrictive or specific than the
applicable ANSI rules and received ANSI approval of them as
"compatible".   At least based on quick skimming, your report
doesn't mention those variations, implying that everything in
uniform within the collection of ANSI and ANSI-accredited
entities.  It might be desirable to do so, if only as a
disclaimer.

(4) I have not carefully reviewed your IETF-related history [2].
A quick skimming didn't spot any significant problems.  I think
it would be useful if someone much closer to the development and
evolution of the IETF's model (appropriate present and former
authors, editors, and WG Chairs know who you are) would do a
careful review, sort out any differences of opinion with you,
and then, if appropriate, create an appropriate link to the the
history.   If nothing else, it might save some time explaining
to people why their latest great idea is something we discussed
and abandoned years ago.

Again, thanks,
    john

[1] http://www.gtwassociates.com/answers/EvolutionISOPolicy.html

[2] http://www.gtwassociates.com/answers/EvolutionIETFPolicy.html

---

From: John C Klensin <[email-masked]>
Date: Fri, 20 Jun 2014 11:43:38 -0400

Hi.

As several others have pointed out, automatic timeouts of any
sort are likely to be very dangerous even if done well.  They
would also violate the key principle that the IETF makes no
attempt to evaluate the validity of patent claims -- evaluation
of whether or not a patent has expired or is no longer
applicable is pretty definitely such an evaluation.

Suggestion for consideration: Suppose we could safely separate
IPR disclosures about a particular specification or technology
from generic statements about a company's patent portfolio in
relation to the IETF.  I think that distinction should be
straightforward, but IANAL and would hope we could get advise
from Counsel on that before proceeding.  If we could, it seems
to me that it would be straightforward to automate a process by
which a reminder were sent out some number of years (say 10)
since the last update reminding the presumed rights-holder that
a disclosure had been filed a decade earlier and inviting them
up update the disclosure with any relevant new information of
which they were aware.  If kept automated and generic enough, it
would involve no evaluation on the IETF's part.  If the
discloser wanted to say "as far as we know, this has expired",
"all even-numbered claims have been invalided by courts and we
are no longer considering trying to enforce them", or even "we
have defended these claims in courts several time and collected
damages from those who infringed", it would provide a reminder
of the opportunity to provide that additional information.  If
not, it wouldn't have cost us anything or exposed us to new
risks.

I don't know if it would produce enough responses to be worth
the trouble and don't know any way to find that out other than
to make a leap of faith and try it.  I also don't know whether I
would recommend that given other priorities and calls on
resources.

It seems to me that is about the best we could sensibly do in
the area of disclosures whose implications change with time
(including, but certainly not limited to, expirations) without
causing more problems or increasing risk.

best,
   john

---

From: Brian E Carpenter <[email-masked]>
Date: Sat, 21 Jun 2014 08:09:25 +1200

> applicable is pretty definitely such an evaluation.

Yes. Clearly, anything we did would need to be qualified with
a disclaimer for that reason, and there is no way that the IETF
can claim to make a determination. My concern is just to remove
the chilling effect of an obsolete disclosure.

> from Counsel on that before proceeding.  

As always. But in fact, the generic disclosures are listed
separately at https://datatracker.ietf.org/ipr/.

> If we could, it seems

Yes. However, it may not work in practice for various reasons,
such as the patent having been sold on (we've seen that happen
by the thousands in recent years) and/or the company having gone
out of business. Or simply that everyone involved has left and
the new people don't know anything about it (even if the automatic
reminder doesn't bounce).

Indeed, there's a good chance that one or several of these problems
would occur with the example I gave.

Sigh. Maybe the best we can do is add a note to the IPR page
stating in lawyerly language that patents generally expire after
a certain number of years and that this should be taken into
account when evaluating disclosures. (Of course, people should
know this, but not everyone who reads a disclosure can be assumed
to know it.)

   Brian