Re: ipr-wg was Proposal to cease accepting IPR disclosures by unstructured email

[Alan Clark <[e-mail]>]

There are several common cases in which an IPR declaration can be very 
late - or in which an IPR declaration is never made but users of the 
RFC/standard are sued.

(i) Large companies accumulate massive patent portfolios. They sometimes 
sell portions of these to patent aggregators. The patent aggregators 
identify related groups of 5-10 patents that seem applicable to a common 
product or technology and then market these to "investors", who are 
typically short lived LLC's that exist for the purpose of monetizing the 
patents.  The original patent owner may have made assurances to 
standards organizations about IPR access however the entities that 
acquire the patents are rather apt to say that they are under no such 
obligation.

(ii) Large companies also say that, since they have so many patents, it 
is impractical to determine if they have patents or applications related 
to a standards activity (small companies are however expected to know 
exactly what they have and can experience pressure not to propose 
anything with related IPR).  You would hope and expect that such large 
companies make a blanket statement to say that if they have any IPR 
relevant to a standards activity then they will make licenses available 
on the basis of reciprocity, however they are not under any obligation 
to do so.

There are also cases (I have personal experience of one) in which the 
named inventor on a patent presented the patented concept to a standards 
body and did not disclose the existence of the patent. The concept was 
included, and some years after the standard was published, the lawyers 
for his company started to approach implementers.  This was a large 
company with maybe 20-50,000 patents however they could not make the 
claim in (ii) above as the named inventor attended the standards meeting 
and presented the idea personally.  They got away with this as they were 
a large well known company that had wide participation across that 
standards organization.  There have been some similar cases in which the 
US Government revoked the patent holder's right to claim payment however 
this seems very rare.

Another thing to note is that the US doctrine of laches appears to have 
gone away with regard to IPR - which means that a company could sue for 
patent infringement for a much longer period.

IMHO it would be ideal to make participation in IETF conditional upon 
early disclosure and/or blanket reciprocity. This means that if a 
company failed to make a disclosure then it could still offer 
reciprocity but if it did not then it would be excluded from future IETF 
participation (or maybe excluded from being editors or WG chairs).  This 
would seem to be the only "incentive" that could be offered by the IETF.

Alan

On 7/18/22 8:20 AM, Alexandre Petrescu wrote:
>
>
> Le 20/06/2022 à 09:03, Brian Carpenter a écrit :
>> IMHO the absence of IPR relevant to a particular specification is a 
>> negative that is impossible to prove.
>
> Yes, I agree.
>
> But it would be good to have a good picture of the IPR situation on a
> particular document at a given time, if someone wants to make a new IPR
> declaration after some years.
>
> Of course, one might wonder why would one come back years after to make
> IPR disclosures.  After all, if the lawyers and the markets were not
> called during all this time, maybe it makes no sense to declare more 10
> years later, when the rights might have expired too.
>
> Maybe it is for the sake of the technicality, or of completeness.
>
> There are probably other reasons as to why IPR disclosures could be made
> later.
>
> Making IPR disclosures is a sort of an 'obligation' as currently stated
> by RFC 8179 ("IETF Participant's obligation to make IPR disclosures as
> required by this policy").  Such obligation might scare some people away
> in some contexts (it did scare me).  Because of that scare, instead of
> contributing a technology to IETF, one might work privately on that
> technology, and discuss at IETF the other non-innovative aspects.
>
> Were that obligation rather formulated as an _incitement_ - something
> like "declare, and you get in a list of well fame of declarers", the
> "IPR directories ranking the organisations", then it would have been
> different.
>
> I dont find such kind of incitement in the RFC8179, but maybe I dont 
> read it perfectly.
>
> Alex
>
>>
>> Let's see. Remember when traffic lights used rubber tubes embedded
>> in the road surface to detect vehicles? Suppose somebody stated
>> there was no relevant IPR. True or false?
>>
>> Regards, Brian Carpenter (via tiny screen & keyboard)
>>
>> On Mon, 20 Jun 2022, 18:53 Lars Eggert, <[e-mail] 
>> <mailto:[e-mail]>> wrote:
>>
>> Hi,
>>
>> On 2022-6-16, at 14:11, Alexandre Petrescu 
>> <[e-mail] <mailto:[e-mail]>>
>>  wrote:
>>> Ideally, I would need to have access to all private declarations
>> of IPR _absence_, not their presence.
>>
>> most contributors cannot make declarations about the absence of IPR,
>>  not even about IPR from their own organizations. (And in my 
>> understanding, most organizations can't, for various reasons, either.)
>>
>>> I understand that all RFC authors are demanded during the last
>> phases prior to RFC issuance to state what they know about IPR.
>>
>> All authors are reminded during the final stages of document 
>> processing in a WG that they were under disclosure obligations all 
>> along, as are all other contributors. We do this, because in the 
>> past, there have been rare cases where authors forgot to do so, or 
>> thought their Legal department had done so but didn't. This reminder
>>  is supposed to make it easier for people to follow the rules; but
>> the disclosure obligations start when someone begins contributing.
>>
>>> In the instances of RFCs where I was an author, all replies from
>> authors, including myself, were such declarations of absence of IPR.
>>
>> The question your document shepherd is asking you as an author is:
>>
>> "(7) Has each author confirmed that any and all appropriate IPR 
>> disclosures required for full conformance with the provisions of BCP
>>  78 and BCP 79 have already been filed. If not, explain why." 
>> (https://github.com/ietf-tools/datatracker/blob/5a31658b7f87054237430ee5fab8a23a8b32a7e8/ietf/templates/doc/shepherd_writeup.txt#L30-L32
>>
>>
>>
> <https://github.com/ietf-tools/datatracker/blob/5a31658b7f87054237430ee5fab8a23a8b32a7e8/ietf/templates/doc/shepherd_writeup.txt#L30-L32>) 
>
>>
>> In other words, you are not asked to declare the presence or absence
>>  of IPR. You are asked whether you have been following the BCP78/79 
>> disclosure obligations as a contributor to a piece of IETF work, as 
>> you are expected to.
>>
>>> These statements are however not captured on
>> https://datatracker.ietf.org/ipr/ <https://datatracker.ietf.org/ipr/>
>>
>> Correct. The result of such reaffirmations by authors end up in the 
>> document shepherd writeups in some form, which are available in the 
>> datatracker, but elsewhere.
>>
>>> As such, when this URL says "The IETF Datatracker maintains a
>> list of IPR disclosures made to the IETF." - could be improved.
>>>
>>> Because not all IPR disclosures made to the IETF are there (e.g.
>> the declarations of absence of IPR are not there).
>>
>> That's because an "IPR disclosure" is a carefully-defined term, and 
>> your interpretation goes beyond that definition. You might want to 
>> re-read Section 5 of BCP79: 
>> https://www.rfc-editor.org/rfc/rfc8179.html#section-5 
>> <https://www.rfc-editor.org/rfc/rfc8179.html#section-5>
>>
>> Thanks, Lars
>>
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