Re: Proposed New Note Well

[Stephan Wenger <[e-mail]>]

Hi,




On 1/4/16, 13:31, "ietf on behalf of Brian E Carpenter" <[e-mail] on behalf of [e-mail]> wrote:

>On 05/01/2016 09:36, Scott O. Bradner wrote:
>> 
>>> On Jan 4, 2016, at 3:21 PM, John C Klensin <[e-mail]> wrote:
>>>
>>> Scott,
>>>
>>> I think this actually muddies the issue.  We've actually got two
>>> separate disclosure rules. Summarizing them in different
>>> language (and after reviewing what is in the RFCs), they are:
>>>
>>> (1) If you are personally involved with a patent and/or you or
>>> your organization claim ownership or some other beneficial
>>> interest in it that you know about (or might reasonably be
>>> expected to know about), then you are _required_ to disclose.
>> 
>> unless you do not “participate” in the standards process relating to that IPR
>> (see RFC 3979 section 6.1.2 - only binding on a person participating in a discussion)
>> 
>> this is the issue that stalled the previous attempt by the IESG to redo the Note Well
>> the previous version stated the requirement as you did - an absolute requirement 
>> to disclose if you have knowledge of “your” iPR - a number of people pointed
>> out that this was not a accurate description of the rules
>> 
>> also the “benefit” language was trying to help with the “owns” case - it is not just that you 
>> or your organization owns the patent - it also covers the case where you or your organization
>> has the right to license the patent to others and the case where you or your or your organization
>> will receive money (or other consideration) from some party who has the right to license the patent to others
>
>To be clear, adding a legally precise definition of the "benefits from" case to
>BCP 79 would, IMHO, be a good idea. But since it is not currently defined there,
>the proposed Note Well language, IMHO, misrepresents what the BCP says.
>
>IANAL, so a view on this from an experienced IPR litigator would be useful.

I don’t claim to be an experienced IP litigator, but I have spent many dozens of hours in court rooms dealing with essential patent cases, which may give me a bit of a “feeling” what could happen.  

IMO, the “benefits from” language extends the scope of what is currently codified in BCP79 with respect of disclosure requirements--people who, under the strictest interpretation of BCP79 (as of Jan 2016) may have had no disclosure obligation, may have one now.  IMO, it extends it in a sensible direction because it addresses to some extent some flavors of the mushrooming privateering problem.  For example, it is well known that certain companies in our industry (with employees participating in the IETF) have sold IETF essential patents to a troll, often below market value.  The troll goes and sues the competition.  The companies receive a certain (sometimes quite large) percentage of the royalties.  Under the strictest interpretation of BCP79 as written, the employees may not have a disclosure obligation, as their employer neither owns nor controls the patent anymore.  This is a loophole in BCP79 that has become quite a problem in our industry over the last few years.

If, after community review, the IETF at large decides that an extension of BCP79’s scope is what it wants, then why not put it in the Note Well?  One participates in the IETF under BCP79 as well as under the Note Well, and no one who ever signed up to mailing lists or attends meetings could successfully argue differently, right?  I doubt that courts would put great significance in the fact that one doc happens to be an RFC/BCP, the other a “mere" Note Well.  Both are policy documents, both are well known, one is newer than the other so it’s logical that the newer one supersedes the older one in case of inconsistencies.  Nowhere in the current incarnation of BCP79 it is said that BCP79 deals with all aspects of patent IP, and all other docs are null and void.  All that could be argued just fine.  Really.

That said, if we get consensus that broadening the disclosure obligations is a Good Thing, and also to do that in the Note Well rather than working another decade on spinning a new BCP79, we better do not make misleading statements about one being a summary of the other, when they are not.

So my suggestion is to keep the “benefits from” language, but remove “The brief summary:” and all other references to “summary”.  Instead, make the Note Well a doc standing on its own.  

Stephan 


>
>   Brian
>
>> 
>> 
>>>
>>> (2) If (1) does not apply but you happen to know about the
>>> patent claims anyway, you are encouraged to disclose but are
>>> under no formal requirement to do so.
>>>
>>> The second is particularly important to those of us who might
>>> get a call from someone saying "TrollCo claims it has patent
>>> rights that cover such-and-such.  Do you have an opinion about
>>> that with regard to either applicability or validity?"   Because
>>> even the asking of questions like that may be covered by NDAs,
>>> the exact IETF requirements are fairly important.
>> 
>> yup - I’m well in that boat myself
>> 
>>>
>>> As usual, what this suggests to me is that the Note Well should
>>> avoid saying things that are misleading.  
>> 
>> or leave things out in a way that is misleading
>> 
>> Scott
>> 
>>> That, in turn, means
>>> either sticking to general advice and pointing to the relevant
>>> documents (in that sense, this attempted revision seems to be a
>>> step in the right direction) or being very specific and precise.
>>> The proposed language in this area seems to be neither.
>>>
>>> Similarly, 
>>>
>>>
>>>
>>> --On Tuesday, January 05, 2016 08:37 +1300 Brian E Carpenter
>>> <[e-mail]> wrote:
>>>
>>>> On 05/01/2016 05:05, John C Klensin wrote:
>>>> ...
>>>>> In particular, don't say "By participating with the
>>>>> IETF, you agree to follow IETF processes and policies" and
>>>>> then identify only a few of them as if they were the complete
>>>>> list.
>>>>
>>>> I thought about trying to express that in my rewrite, but
>>>> couldn't see an easy way to cover it. As I repeat from time to
>>>> time, the hard way to cover it is
>>>> http://www.ietf.org/about/process-docs.html . Good luck in
>>>> trying to summarise that for the Note Well.
>>>
>>> But that suggests that either the Note Well should be about IPR
>>> and should say to, possibly adding a sentence there are lots of
>>> important non-IPR policies of which people need to be aware or,
>>> difficult or not, it should be comprehensive.  Picking one
>>> handful of policies and ignoring others seems like a recipe for
>>> trouble unless the boundary or stopping rule is clearly
>>> identified.  As you suggest above, good luck with that
>>> delineation as well as with the comprehensive summary. 
>>>
>>>    john
>>>
>>>
>>>
>>>
>>> --On Monday, January 04, 2016 14:48 -0500 "Scott O. Bradner"
>>> <[e-mail]> wrote:
>>>
>>>> ps - stated better in RFC 3979 sec 6.6
>>>>
>>>> 6.6.  When is a Disclosure Required?
>>>>
>>>>   IPR disclosures under Sections 6.1.1. and 6.1.2 are
>>>> required with    respect to IPR that is owned directly or
>>>> indirectly, by the    individual or his/her employer or
>>>> sponsor (if any) or that such    persons otherwise have the
>>>> right to license or assert.
>>>>
>>>>
>>>>> On Jan 4, 2016, at 2:41 PM, Scott O. Bradner <[e-mail]>
>>>>> wrote:
>>>>>
>>>>>
>>>>>>> • If you are aware that any contribution to the IETF is
>>>>>>> covered by patents or patent applications that are owned
>>>>>>> by, controlled by, or would benefit you or your sponsor,
>>>>>>> you must disclose that fact, or not participate in the
>>>>>>> discussion.
>>>>>>
>>>>>> Where does "or would benefit" come from in BCP 79? While I
>>>>>> agree with the sentiment, I don't think it follows from our
>>>>>> rules, so I think it must be deleted.
>>>>>
>>>>> the concept comes from (for example) RFC 3979 section 6.1.3
>>>>> 6.1.3.  IPR of Others
>>>>>
>>>>>  If a person has information about IPR that may Cover IETF
>>>>>  Contributions, but the participant is not required to
>>>>>  disclose because they do not meet the criteria in Section
>>>>>  6.6 (e.g., the IPR is owned by some other company), such
>>>>>  person is encouraged to notify the IETF by sending an email
>>>>>  message to [e-mail].  Such a notice should be sent
>>>>>  as soon as reasonably possible after the person realizes
>>>>>  the connection.
>>>>>
>>>>> i.e. the text is trying to deal with the case where you know
>>>>> of IPR but it is not "yours"
>>>>>
>>>>> this seemed to be a clean way to express the condition - just
>>>>> eliminating the phrase would, imo, make it harder to
>>>>> understand when disclosure is required -  other ways to get
>>>>> the point across would be helpful
>>>>>
>>>>> Scott
>>>>>
>>>>>
>>>>>
>>>>
>>>
>>>
>>>
>>>
>> 
>> .
>> 
>