Re: Proposed New Note Well

Brian E Carpenter <brian.e.carpenter@gmail.com> Mon, 04 January 2016 21:31 UTC

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Subject: Re: Proposed New Note Well
To: "Scott O. Bradner" <sob@sobco.com>, "John C. Klensin" <john-ietf@jck.com>
References: <20160104154102.1127.50621.idtracker@ietfa.amsl.com> <568AC7FE.101@gmail.com> <6451D0B3-9B0C-475E-B178-98E9EB6FD7D9@sobco.com> <11ED7904-3309-4B87-B8A4-7C4663C1AC30@sobco.com> <6EC907910707D24C66FF601E@JcK-HP8200.jck.com> <B8C14BAA-699A-4890-9A1C-B227D07CC5B3@sobco.com>
From: Brian E Carpenter <brian.e.carpenter@gmail.com>
Organization: University of Auckland
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Date: Tue, 5 Jan 2016 10:31:28 +1300
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On 05/01/2016 09:36, Scott O. Bradner wrote:
> 
>> On Jan 4, 2016, at 3:21 PM, John C Klensin <john-ietf@jck.com> 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.

   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
>> <brian.e.carpenter@gmail.com> 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"
>> <sob@sobco.com> 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 <sob@sobco.com>
>>>> 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 ietf-ipr@ietf.org.  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
>>>>
>>>>
>>>>
>>>
>>
>>
>>
>>
> 
> .
>