Re: Expired patents

Brian E Carpenter <brian.e.carpenter@gmail.com> Fri, 20 June 2014 20:09 UTC

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Date: Sat, 21 Jun 2014 08:09:25 +1200
From: Brian E Carpenter <brian.e.carpenter@gmail.com>
Organization: University of Auckland
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To: John C Klensin <john-ietf@jck.com>
Subject: Re: Expired patents
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On 21/06/2014 03:43, John C Klensin wrote:
> Hi.
> 
> As several others have pointed out, automatic timeouts of any
> sort are likely to be very dangerous even if done well.  They
> would also violate the key principle that the IETF makes no
> attempt to evaluate the validity of patent claims -- evaluation
> of whether or not a patent has expired or is no longer
> applicable is pretty definitely such an evaluation.

Yes. Clearly, anything we did would need to be qualified with
a disclaimer for that reason, and there is no way that the IETF
can claim to make a determination. My concern is just to remove
the chilling effect of an obsolete disclosure.

> Suggestion for consideration: Suppose we could safely separate
> IPR disclosures about a particular specification or technology
> from generic statements about a company's patent portfolio in
> relation to the IETF.  I think that distinction should be
> straightforward, but IANAL and would hope we could get advise
> from Counsel on that before proceeding.  

As always. But in fact, the generic disclosures are listed
separately at https://datatracker.ietf.org/ipr/.

> If we could, it seems
> to me that it would be straightforward to automate a process by
> which a reminder were sent out some number of years (say 10)
> since the last update reminding the presumed rights-holder that
> a disclosure had been filed a decade earlier and inviting them
> up update the disclosure with any relevant new information of
> which they were aware.  If kept automated and generic enough, it
> would involve no evaluation on the IETF's part.  If the
> discloser wanted to say "as far as we know, this has expired",
> "all even-numbered claims have been invalided by courts and we
> are no longer considering trying to enforce them", or even "we
> have defended these claims in courts several time and collected
> damages from those who infringed", it would provide a reminder
> of the opportunity to provide that additional information.  If
> not, it wouldn't have cost us anything or exposed us to new
> risks.

Yes. However, it may not work in practice for various reasons,
such as the patent having been sold on (we've seen that happen
by the thousands in recent years) and/or the company having gone
out of business. Or simply that everyone involved has left and
the new people don't know anything about it (even if the automatic
reminder doesn't bounce).

Indeed, there's a good chance that one or several of these problems
would occur with the example I gave.

Sigh. Maybe the best we can do is add a note to the IPR page
stating in lawyerly language that patents generally expire after
a certain number of years and that this should be taken into
account when evaluating disclosures. (Of course, people should
know this, but not everyone who reads a disclosure can be assumed
to know it.)

   Brian


> I don't know if it would produce enough responses to be worth
> the trouble and don't know any way to find that out other than
> to make a leap of faith and try it.  I also don't know whether I
> would recommend that given other priorities and calls on
> resources.
> 
> It seems to me that is about the best we could sensibly do in
> the area of disclosures whose implications change with time
> (including, but certainly not limited to, expirations) without
> causing more problems or increasing risk.
> 
> best,
>    john
> 
> 
> 
>