Re: Proposed Update to Note Well

[Barry Leiba <[e-mail]>]

I do jot agree with what John says below.  Look at Section 6.6 of RFC 3979,
where it talks abou who owns the IPR.  In the case given below, the
participant no longer owns the IPR, directly or indirectly.  It's owned by
company X.  The participant is, thus, encouraged to file a third-party
disclosure, but nothing is required.

That said, I, as John, think none of that matters for this brief "sound
bite".  I think this should say nothing more than that if you know about
relevant IPR you or your employer have to disclose.  The "ifs, ands, and
buts," and any other qualifications should be left for the details part.

Barry

On Friday, June 22, 2012, John C Klensin wrote:

>
>
> --On Friday, June 22, 2012 16:52 -0400 Jorge Contreras
> <[e-mail] <javascript:;>> wrote:
>
> >>  [RU]  Your new (current) company does not "own" the patent
> >>  and neither do you, if you have signed away your rights,
> >> which you are required to do for most companies in the US.
> >> But you should still disclose the patent.
> >>
> >> Ah, I see your point now.  You are right about ownership, but
> >> this would
> > become a "third party disclosure".  It's not required, but is
> > recommended under BCP 79.  It's the same as if you knew about
> > a patent held by another, unrelated company.  Once you leave
> > the first employer, you don't know what the fate of the patent
> > is (e.g., it could be sold, abandoned, etc.) so you aren't
> > required to disclose it (just encouraged to).
>
> Jorge, while I understand your reasoning, it seems to me that
> you are creating a loophole here that we don't want (and that
> isn't justified by the BCP).   Consider the following scenario:
>
> While working for company X, I invent something and a patent
> application is filed with my name as the inventor.  According to
> company policy, I assign all rights to the patent (if awarded)
> to the company.   I then leave company X and join company Y.
> Just to make this a little easier by avoiding some of the
> complex issues associated with disclosing patent applications),
> assume that there are no survivable NDAs with company X that
> prevent my disclosing the patent application to company Y or to
> the IETF.  As another simplification, assume that I became
> active in the IETF only when I joined company Y (that avoids any
> question about my obligation or lack thereof to disclose while I
> was still working for company X).
>
> Now, I find myself in a WG that is considering a technology that
> I reasonable believe interacts with the patent application in
> question.  There is no basis on which I can claim that I didn't
> know about that application... after all, I signed it.   So I
> think I'm _obligated_ to disclose.  Whether that disclosure is
> 1st party (I'm the inventor) or third party (the thing belongs
> to company X) seems like uninteresting hair-splitting.  And my
> disclosure might say "I know about this application but you need
> to check with the patent owner, which was Company X when last I
> had first-hand knowledge, as to what its current status is".
> But asserting that such a disclosure is not required puts the
> notion of what I might reasonably be expected know into a rather
> different light, one that, IMO, might be very damaging to the
> process.
>
> And, no, I don't think the Note Well needs to go nearly into
> that level of detail.  For it, it seems to me that it is
> sufficient to say that one is obligated to disclose if one has
> first-hand, direct, knowledge of the patent (or application) and
> that disclosure under other circumstances is encouraged and
> might, in some cases, be required.
>
>     john
>
>