I am not an expert in this field but it seems to me that the "IPR-free"
zone to which you refer is automatically excluded from the IPR policy
because only claims or potential claims of IPR involving work of a TC
can trigger provisions of the IPR policy in the first place. So perhaps
one way of looking at it is that the "IPR-free" zone is outside the
scope of the IPR policy but continues to co-exist nonetheless in a
robust environment.
Best regards.
John Messing
American Bar Association representative to OASIS
Member, LegalXML Steering Committee
> -------- Original Message --------
> Subject: Re: [chairs] reminder to chairs: OASIS IPR Policy member
> review
> From: "David RR Webber" <>
> Date: Fri, September 10, 2004 6:13 am
> To: "Philpott, Robert" <>
> Cc: , ,
>
>
> Robert,
>
> Thanks for all these notes.
>
> It is still very unclear to me - which of the three IPR choices
> currently on the table is intended to function as an 'IPR free-zone'. Eg
> - the TC is operating without any IPR licensing, and all participants
> are agreeing to contribute entirely unburdened submissions to the TC,
> and not attempt to gain future IPR on TC work
>
> We have TCs that currently exist explicitly because work was proceeding
> under that basis - particularly government sponsored TC work, and
> clearly we need to retain that ability for TCs that operate under those
> constriants.
>
> It would be good to know which of the three IPR choices matches this so
> those TCs gain reference that for their government sponsors accordingly.
>
> We may also want to ask government legal departments involved to comment
> further.
>
> Thanks, DW
> =======================
> Philpott, Robert wrote:
>
> > 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 3^rd 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
> >
