RE: [chairs] reminder to chairs: OASIS IPR Policy member review

Karl, et al,

 

RSA Security performed an internal review with our legal
department to evaluate the proposed OASIS IPR Policy.  I've included our
relevant comments and questions below.

 

The points we feel most strongly about are:

 
Lines 73-79, 82-87: Defines the
     terms “OASIS Committee Draft”, “OASIS Committee
     Specification”, “OASIS Specification”, and “OASIS
     Standard”.  In the recent revision of the TC process, the term
     “Committee Specification” was eliminated and replaced with
     “Committee Draft”.  So it appears that this IPR Policy is
     introducing a 3rd level of specification (CD, CS, and Standard)
     and uses the term “OASIS Specification” to meaneither  an
     “OASIS Committee Specification” or an “OASIS Standard”
     (depending on context). Is this true?  The use of the term “OASIS
     Specification” in the policy makes it VERY difficult to keep
     straight which level of spec is actually being referred to.  This
     gets WAY too confusing and is easily misinterpreted.  We recommend
     dropping the definition and use of this term.  Wherever the policy
     uses “OASIS Specification”, it should just use the “OASIS
     Committee Specification” or “OASIS Standard” terms or
     both.

 
Lines 103-105: The definition
     of “Products” only includes “specific portions of
     products . . . that implement and are compliant with all Normative
     Portions of an OASIS Specification.” [emphasis added]  However,
     “Normative Portions” are defined to include portions of
     optional parts that must be implemented.  We suggest that the
     Normative Portions of optional parts be excluded from the word
     “all”.

 
Lines 311-312: There appears to
     be a choice between the terms “that Obligated Party” and
     “all implementers of such OASIS specification”.  We prefer
     the term “Obligated Party”.  The license agreement is
     between the Licensee and the Obligated Party.  The Licensee is only
     getting rights to that particular Obligated Party’s IP.  It
     only seems reasonable that the reciprocal grant be to the Obligated Party
     and not to ALL implementers.  If the grant back is to all
     implementers, the Licensee may have no leverage to negotiate licenses with
     other Obligated Parties, as those Parties will already have a license.

 
Lines 336-337: We prefer the
     term “that Obligated Party” for the reasons described above
     for lines 311-312.

 
Lines 338-339: We prefer the
     term “the Obligated Party” for the reasons described above for
     lines 313-314.

 
Regarding all of the licensing
     modes:  The FAQ states in section 4.4 that the IPR Policy defines
     particular licensing baselines, and that other terms more favorable to the
     Licensee may be offered instead. We believe that the IPR Policy should
     affirmatively state that the licensing terms apply unless a separate
     agreement is reached. What is “more favorable” is subjective,
     but we’re comfortable with this term.  If, for example, a
     licensee did not wish to provide reciprocal rights, separate terms could
     be negotiated.  The IP licensing modes should not prevent companies
     from doing deals that make sense for both parties.

 

In addition we have a few other comments/questions:

 
Line 45:  The clause
     “in effect at the time such OASIS specification was developed”
     is used.  This is an odd sentence.  It is not clear from
     the sentence whether this clause modifies the TC charter or “the
     claims in any patent or patent application”.  We suggest that
     the claims should include future claims.  Here’s a potential
     scenario.  A patent application is pending while a spec is being
     developed.  The claims as filed do not apply to the spec.  After
     the spec is completed the claims are amended to now cover the spec.
      It seems reasonable that these claims should be included in the
     “Essential Claims.”

 
Lines 46-49:  As written,
     the definition of Essential Claims includes Normative Portions of optional
     parts.  I understand that there may be several ways to implement a
     feature of a spec.  We would be concerned if one of our technologies
     was described as an “option” and then we were forced to
     license.  If there are non-infringing “options”, our IP
     should not become an Essential Claim.

 
Lines 41-51: We suggest that
     the definition of Essential Claims be clarified to state that the claims
     are “claims owned or controlled by a party.”  We further
     suggest that there be a carve-out for claims “that if licensed,
     would require a payment of royalties by the licensor to unaffiliated third
     parties.”  In the licensing requirements section (section 10),
     the Obligated Party’s claims are referred to as “its Essential
     Claims.”  Our reasoning for the first suggestion is that the
     definition of Essential Claims would then encompass both claims that are
     owned by a company as well as claims for which a company is the exclusive
     licensee with rights to sublicense.  In certain situations, patents
     are exclusively licensed rather than assigned.  The exclusive
     licensee basically controls the patent.  My reasoning for the
     carve-out is that if a TC selects a RF mode, it would not be fair to force
     the Obligated Party to sublicense for free and then have to pay fees to a
     third party.

 
Lines 185-186: Refers to
     “implementations of draft versions of an OASIS Committee
     Specification”.  Is this the same as an “OASIS Committee
     Draft” by the new definitions? Or is it referring to rev’s (i.e.
     drafts) of the specs that have not been voted on by the TC?

 
Lines 279-281: This clause
     doesn’t seem quite correct.  It says that the obligation kicks
     in when an “OASIS Specification” (which as mentioned earlier
     is either an OASIS Committee Specification or an OASIS Standard) is
     approved that incorporates “such OASIS Committee Draft, either in
     whole or in part”.  We can see how the “OASIS Standard”
     type of OASIS Specification might incorporate the “OASIS Committee
     Specification”, but it doesn’t make sense to talk about an “OASIS
     Committee Specification” incorporating the “OASIS Committee
     Specification”. This is very difficult to interpret the intent of
     the clause.  Also, the use of “in whole or in part” seems
     to kick in the obligation even if the part that might be included no
     longer deals with the claims.

 

Rob Philpott

Senior Consulting Engineer 

RSA Security Inc. 

Tel: 781-515-7115 

Mobile: 617-510-0893 

Fax: 781-515-7020 

mailto:

> -----Original Message-----

> From: Karl F. Best [mailto:]

> Sent: Friday, July 30, 2004 2:55 PM

> To: 

> Subject: [chairs] reminder to chairs: OASIS IPR Policy member
review

> 

> TC chairs:

> 

> On 9 July OASIS announced to its membership a draft IPR Policy
that has

> been developed by our Board, and requested that members review and

> provide comment on this draft. (See

> http://lists.oasis-open.org/archives/members/200407/msg00002.html)

> 

> One of the documents in this review is the proposed Transition
Policy,

> which describes how TCs will transition to the new IPR Policy by

> selecting an IPR mode to operate under, after which the OASIS
members

> (organizations and individuals) represented in the TC will vote to

> ratify that selection.

> 

> In addition to the other issues in the IPR Policy that you
individually

> and your companies may be interested in, I would also appreciate
your

> TCs looking at, discussing, and commenting on the transition to
the new

> IPR Policy, as well as any other parts of the Policy that will
affect

> the day-to-day operations of the TC.

> 

> -Karl

> 

> =================================================================

> Karl F. Best

> Vice President, OASIS

> office  +1 978.667.5115 x206     mobile
+1 978.761.1648

>      
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