Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)

[Brian E Carpenter <[e-mail]>]

On 2009-12-01 06:03, Thierry Moreau wrote:
> Simon Josefsson wrote:
>> Brian E Carpenter <[e-mail]> writes:
>>
>>  
>>> On 2009-11-24 06:44, Steven M. Bellovin wrote:
>>>    
>>>> On Mon, 23 Nov 2009 08:16:49 -0500
>>>> Scott Brim <[e-mail]> wrote:
>>>>
>>>>      
>>>>> Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM:
>>>>>        
>>>>>> John-Luc said he is bound by confidentiality obligations from his
>>>>>> company, and I think the same applies to most employees of larger
>>>>>> organizations.  There is nothing explicit in BCP 79 to protect
>>>>>> against this apparent conflict of interest, or is there?
>>>>>>           
>>>>>    Since disclosure is required
>>>>>    for anyone submitting documents or participating in IETF
>>>>> discussions, a person who does not disclose IPR for this reason, or
>>>>> any other reason, must not contribute to or participate in IETF
>>>>> activities with respect to technologies that he or she reasonably and
>>>>> personally knows to be Covered by IPR which he or she will not
>>>>> disclose.
>>>>>
>>>>>         
>>>> Precisely.  The conflict Simon mentions was of course known to most of
>>>> the WG; that's one reason we have that clause.
>>>>       
>>> IMHO, BCP79 creates no particular problem for corporate lawyers who
>>> are instructed by their corporate management to ensure that the company
>>> behaves as a good citizen in its standards activities. This is strongly
>>> in the company's interests, anyway, since failure to disclose when
>>> required by a standards process threatens the validity of the patent.
>>>     
>>
>> There is no requirement in the IETF process for organizations to
>> disclose patents as far as I can see.  The current approach of only
>> having people participate, and disclose patents, in the IETF is easy to
>> work around by having two persons in an organization doing different
>> things: one works on specifying and standardizing technology, and the
>> other is working on patenting the technology.

Replying first to Simon:

The requirement is indeed on individual participants and only if they
"reasonably and personally" know about the IPR. But employees participating
in an activity for their employer are (afaik, IANAL) acting as agents
of their employer, and it's standard practice in most companies for
them to have their legal obligations such as IPR disclosure handled by
a company lawyer or IPR specialist. So the distinction really doesn't
matter. I believe that we included "reasonably and personally known"
exactly because of the problem of employees of one department of a big
company not knowing what other departments were doing, and to avoid the
onerous cost of a patent search for employees of companies holding tens
of thousands of patents. I believe that this setting of the rules has
worked well since the disclosure requirement was introduced in 1996.

> Hi Simon,
> 
> This is certainly correct in principles. But to which extent the IETF
> disclosure approach "is easy to work around by having two persons ..."
> is a matter of appreciation.
> 
> My understanding is that it is not easy to arrange protocol engineer
> rolls in such a way. I'm quite sure you don't have a clear case which
> you can refer to support the opposite view. The reason I am confident is
> that both inventor status and an IETF contributor require creativity in
> general. The IETF collective engineering faces technological challenges
> like any other design group.
> 
> I guess it is not realistic to expect managers to send protocol
> engineers with little creativity traits to the IETF in order to preserve
> the ability to file patent applications without disclosure.
>>> It really is not the IETF's problem. It is a problem for a company that
>>> chooses not to behave as a good citizen.
>>>     
>>
>> The situation remains that the IETF does not have any mechanism to apply
>> pressure on organizations to disclose patent information.
>>
>>   
> This is certainly correct, but I am afraid the cause is more profound
> than the above IPR disclosure work around. Specifically, the Qualcom vs
> Broadcom case on JVT over H.264 IPR would have taught corporate lawyers
> that a standardization body membership contract binding to the
> corporation is a must for IPR disclosure enforcement against the
> corporation. (I am not a lawyer ...) The IETF does not use this approach.

Replying to Thierry:

Again, IANAL, but I understand that participants and their employers
are bound by the IETF rules by the simple fact of participation, with
no need for an explicit contract. The famous Note Well text is simply
a reminder of that. The IETF doesn't need to enforce anything; patent
holders who break the rules will have to explain why to a judge, if
someone challenges their patent in court.

Of course, we can underline the point by choosing to rescind a standard
if a participant is found to have broken the rules.

    Brian