Rats – I made a cut and paste error and
dropped one of the comments. I’ve embedded it below…
From: Philpott, Robert
[mailto:]
Sent: Friday, September 10, 2004
1:16 AM
To: ;
Cc:
Subject: 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.
· [RSP] Lines 313-314: There is a
choice between the terms “Obligated Party” and “any
implementer”. Again, we prefer the term “Obligated
Party”. Assume that Licensee enters into an agreement with an
Obligated Party, but does not come to agreement with another implementer.
If the term “any implementer” is used, the Licensee cannot sue the
implementer without worrying that Obligated Party would terminate its agreement
with the Licensee. The Licensee could not enforce its IP against any
other implementer. Every implementer would effectively have a
license without giving any consideration to that Licensee, including reciprocal
rights. The phrase “for infringement of claims essential to
implement such OASIS Specification” should be replaced with “for
infringement of Essential Claims”. What makes a claim
“essential” has already been defined. Using the defined term
will help prevent confusion. The provision in lines 312-315 also seems
one-sided. The Licensee should be able to suspend the license to the
Obligated Party if the Obligated Party sues the Licensee.
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
>
http://www.oasis-open.org
