Re: Last Call on draft-bradner-rfc3979bis-08.txt ("Intellectual Property Rights in IETF Technology")

Pete Resnick <presnick@qti.qualcomm.com> Mon, 11 April 2016 17:17 UTC

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From: Pete Resnick <presnick@qti.qualcomm.com>
To: IETF <ietf@ietf.org>
Subject: Re: Last Call on draft-bradner-rfc3979bis-08.txt ("Intellectual Property Rights in IETF Technology")
Date: Mon, 11 Apr 2016 12:17:21 -0500
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Some questions and comments, much of them editorial, though nonetheless 
important:

- Section 2:

The third paragraph of 3979 section 2 (with the 2026 "principles") was 
deleted. I kinda liked it. Can we put it back in? So basically I'm 
suggesting:

OLD
     Section 1 defines...
NEW
     RFC 2026, Section 10 established three basic principles regarding
     the IETF dealing with claims of Intellectual Property Rights:

     (a) the IETF will make no determination about the validity of any
         particular IPR claim
     (b) the IETF following normal processes can decide to use 
technology
         for which IPR disclosures have been made if it decides that 
such
         a use is warranted
     (c) in order for the working group and the rest of the IETF to have
         the information needed to make an informed decision about the
         use of a particular technology, all those contributing to the
         working group's discussions must disclose the existence of any
         IPR the Contributor or other IETF participant believes Covers 
or
         may ultimately Cover the technology under discussion.  This
         applies to both Contributors and other participants, and 
applies
         whether they contribute in person, via email or by other means.
         The requirement applies to all IPR of the participant, the
         participant's employer, sponsor, or others represented by the
         participants, that is reasonably and personally known to the
         participant.  No patent search is required.

     Section 1 defines...
END

- Section 4:

A bunch of (D) (what was section 4.1 from 3979) was deleted. It seemed 
like sensible stuff. Why was it removed? Was it just the 2026 reference? 
Couldn't we just update that to refer to 6410?

- Section 5.2.1 (A): The stuff after the first sentence is more 
completely described in 5.4.2. How about a forward reference here 
instead:

OLD
                                                                   For
        example, if the Contribution is an update to a Contribution for
        which an IPR disclosure has already been made and the
        applicability of the disclosure is not changed by the new
        Contribution, then no new disclosure is required.  But if the
        Contribution is a new one, or is one that changes an existing
        Contribution such that the revised Contribution is no longer
        Covered by the disclosed IPR or would be Covered by new or
        different IPR, then a new disclosure must be made.
NEW
        See section 5.4.2 for a discussion of when updates need to be
        made for an existing disclosure.
END

- Section 5.4.2(A):

A couple of cleanups items in this section, and one concern. First, the 
cleanup: Clause (2) could use the same "unless" clause that (1) and (3) 
have; if you've got enough info regarding the patent application in the 
disclosure to find that it's been abandoned, there shouldn't be a hard 
requirement to update the disclosure. Also, clause (4) says "causes the 
Disclosure to be covered" when it should say "causes the Contribution to 
be covered". But even leaving that aside, clause (4) is a really a noop: 
If there is a material change to the document, that is in and of itself 
a new contribution, and is therefore addressed by section 5.1 or the 
"inherited by revisions" sentence at the bottom of 5.4.2(A). So, for the 
first part of 5.4.2(A), I suggest the following:

OLD
     A. An IPR disclosure must be updated or a new disclosure made
        promptly after any of the following has occurred: (1) the
        publication of a previously unpublished patent application,
        (unless sufficient information to identify the published
        application was disclosed when the unpublished application was
        disclosed), (2) the abandonment of a patent application (3) the
        issuance of a patent on a previously disclosed patent 
application
        (unless sufficient information to identify the issued patent was
        disclosed when the patent application was disclosed), (4) a
        material change to the IETF Document covered by the Disclosure
        that causes the Disclosure to be covered by additional IPR.
NEW
     A. An IPR disclosure must be updated or a new disclosure made
        promptly after any of the following has occurred unless
        sufficient information was provided when the original disclosure
        was made to discover the status of the patent or patent
        application: (1) the publication of a previously unpublished
        patent application, (2) the abandonment of a patent application,
        or (3) the issuance of a patent on a previously disclosed patent
        application.
END

As far as the concern, the second part of the next sentence in 5.4.2(A) 
is worrisome:

                                                                     If 
a
        patent has issued, then the new IPR disclosure must include the
        patent number and, if the claims of the granted patent differ
        from those of the application in manner material to the relevant
        Contribution, the IPR disclosure must describe any differences 
in
        applicability to the Contribution.

The first part is fine, though it repeats what's in 5.4.1 already, so I 
think it can be dropped. But the second part is what I'm concerned 
about. We've never before required disclosures to determine and discuss 
the applicability of the disclosure to the Contribution, and nowhere 
else in this document is that mentioned. Indeed, we go to great lengths 
to say that the leadership of the IETF doesn't try to figure out 
applicability, and that even WGs or the IESG can only take into account 
their opinions of what the applicability is. As a general rule, I don't 
think we can ask people who disclose to do the analysis to determine 
what parts of the patent do or do not apply to a particular 
contribution. As we say elsewhere, that's really up to a court. So I 
think the above should just be dropped.

A few editorial ones suggested by some lawyer friends. They all seem 
eminently sensible to me:

- Section 5.5(A): s/i.e./e.g.

- Section 5.5(B): s/royalty rates/royalties. I'm told that there are 
royalties that might not have "rates" associated with them.

- Section 5.5(C): Two things:

OLD
       and will attach to the associated IPR
NEW
       and will attach, to the extent permissible by law, to the 
associated IPR
END

I'm told that there are some jurisdictions where you may not be able to 
do that.

OLD
       must ensure that such
       commitments are binding on any subsequent transferee of the
       relevant IPR.
NEW
       must ensure that such commitments are binding on a transferee of
       the relevant IPR, and that such transferee will use reasonable
       efforts to ensure that such commitments are binding on a
       subsequent transferee of the relevant IPR, and so on.
END

The object of the "subsequent" wasn't clear, so this just spells it out. 
Wordy, but more precise.

- Section 7, paragraph 6:

The only change in this paragraph from 3979 was to add the word "all" in 
the second-to-last sentence. My lawyer friends tell me that this little 
change is opening a can of worms, having to do with licensing to makers 
of parts instead of implementers of the whole specification. I don't 
think we meant to change the meaning from the 3979 meaning, and I 
certainly don't think that we meant to change some implication about 
whether folks in general needed to license to people that make parts 
where they wouldn't have before. Was there something unclear about that 
sentence that needed the word "all" added to it? We aren't making a 
substantive change, are we? Can we just strike it? It seemed pretty 
clear to me before.

pr
-- 
Pete Resnick <http://www.qualcomm.com/~presnick/>
Qualcomm Technologies, Inc. - +1 (858)651-4478