It sounds like a license registry would be helpful for this purpose.
> -------- Original Message --------
> Subject: RE: [chairs] Patent license friction...
> From: "Wachob, Gabe" <>
> Date: Mon, May 01, 2006 11:11 am
> To: "John Messing" <>, "David RR Webber (XML)"
> <>
> Cc: "Chairs OASIS" <>, "Frederick Hirsch"
> <>
>
> John-
> Thanks for the perspective. I think my point may not have been made
> very clearly - my point was merely that in many cases, these specs
> require users/implementers/etc to take an affirmative step to request
> and execute separate license from one or more patent-holding members.
>
> I'd be surprised if most users of SAML actually go through the steps
> of executing these licenses. And a big problem for large organizations
> like Visa is that each one of these licenses has to be tracked and
> reviewed by attorneys, etc. That sucks! We are left in a position where
> we either use specs without executing proper licenses (and thereby
> running the risk of *willful* infringement which runs up greater
> damages) or going to a number of different companies to execute a number
> of different licenses, each of which has to be reviewed and tracked
> internally, etc.
>
> I'm not saying we can solve this problem here but there are two items
> I am bringing up:
>
> a) I don't know if people are really aware of the need to execute these
> licenses in many cases. My previous email suggested that there isn't
> nearly enough clarity for casual reviewers on what the licensing terms
> are for these specifications and what the mechanics are for acquiring
> and executing these licenses.
>
> b) OASIS *can* begin to address the issue by suggesting (or at least
> pushing large IP holder members to agree on) more uniform licensing
> terms and licenses for patent holders wishing to contribute to RF/RAND
> efforts. Additionally, the more licenses are unilateral (ie executed by
> virtue of using the spec instead of being executed by virtue of signing
> and returning to the licensor), the better, from an implementers point
> of view.
>
> If vendors (who tend to be the ones holding the IP) want users to
> adopt specs and standards, I would argue its in the vendors' interest to
> make IP licensing as easy as possible... Especially where the intent is
> *not* to create revenues streams or exert control over a technology area
> via licensing!
>
> I would note that this is not unique to OASIS - a quick check of IETF
> has many similar disclosures and promises to license (if you contact
> each individual licensor) on its IPR disclosures page.
>
> -Gabe
>
> > -----Original Message-----
> > From: John Messing [mailto:]
> > Sent: Friday, April 28, 2006 6:21 AM
> > To: David RR Webber (XML)
> > Cc: Chairs OASIS; Wachob, Gabe; Frederick Hirsch
> > Subject: RE: [chairs] Patent license friction...
> >
> > Hi David and Gabe:
> >
> > The below-referenced U.S. patent was awarded in 2005 to Sun
> > Microsystems
> > as assignee for "Single sign-on framework with trust-level mapping to
> > authentication requirements"
> >
> > http://patft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HI
> > TOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=10&f=G&l=50&
> > co1=AND&d=PTXT&s1=sun.ASNM.&s2=authentication.ABTX.&OS=AN/sun+
> AND+ABST/authentication&RS=AN/sun+AND+ABST/authentication
> >
> > I think Gabe's original question is complicated by the period in which
> > an OASIS standard was approved: one must keep in mind whether it
> > occurred under a legacy IPR mode or one of the newer IP modes that are
> > designed to be adopted by TC's by no later than next year.
> >
> > The American Bar Association's Science and Technology Law
> > Section has a
> > committee that is working on the relationship between patents and
> > standards work.
> >
> > Currently IMHO there is no easy or simple answer to Gabe's inquiry.
> >
> > John Messing
> >
> > > -------- Original Message --------
> > > Subject: RE: [chairs] Patent license friction...
> > > From: "David RR Webber (XML)" <>
> > > Date: Thu, April 27, 2006 8:43 pm
> > > To: Frederick Hirsch <>
> > > Cc: Chairs OASIS <>, "ext Wachob,Gabe"
> > > <>
> > >
> > >
> > > Gabe,
> > >
> > > Of course the other option is to have TC work that
> > precludes patented
> > > material.
> > >
> > > I still do not see any IPR policy that specifically
> > supports that option
> > > - other than the legacy policy.
> > >
> > > To my knowledge the BOD - despite Patricks assertions that
> > OASIS would -
> > > still has made no effort to accommodate the OSI concerns in
> > this regard
> > > nor arranged any conference calls or interactions with OSI
> > to move toward
> > > having OASIS TC work able to comply to OSI licensing needs.
> > >
> > > For the life of me I cannot see anything in SAML that anyone could
> > > legitimately claim to have a patented invention around.
> > But then again
> > > people have patents on the menu key sequence for bank ATMs
> > - clearly a
> > > ground breaking invention - key pad sequences. Would be
> > interesting to
> > > know exactly what about SAML is using such a unique
> > mechanism that it is
> > > a patented system?
> > >
> > > Assuming the patent may fall under the
> > not-really-an-invention-at-all
> > > category - hopefully the SAML TC can re-factor their work
> > so that it does
> > > not rely on any dubious or questionable patents in the
> > first place...
> > >
> > > DW
> > >
> > >
> > >
> > > -------- Original Message --------
> > > Subject: Re: [chairs] Patent license friction...
> > > From: Frederick Hirsch <>
> > > Date: Thu, April 27, 2006 5:51 pm
> > > To: "ext Wachob, Gabe" <>
> > > Cc: Frederick Hirsch <>, "Chairs OASIS"
> > > <>
> > >
> > > Gabe
> > >
> > > I believe the SSTC is operating under the legacy IPR policy. TCs
> > > under the current (new) policies incur much clearer and well-
> > > understood obligations, which should go a long way toward reducing
> > > friction and confusion.
> > >
> > > In general I believe the reason law tends to be difficult
> > is that it
> > > is difficult to clearly state in language precise rules where the
> > > concerns of various parties are met. The new OASIS policy
> > attempts to
> > > do this as clearly as possible, specifying the "features" of the
> > > license that may be used in the different IPR modes,
> > providing more
> > > clarity on the licenses that may be obtained.
> > >
> > > However, within the scope of the OASIS policy it is the right of a
> > > patent holder to write their license. Likewise it is not
> > unreasonable
> > > to have more than one means of obtaining a license from a patent
> > > holder, although it may be in everyone's interest to make it easier.
> > >
> > > In the specific example, I would take the "would" to
> > indicate that a
> > > license will be granted if and when needed, which seems
> > reasonable.
> > > I'd recommend consult your attorney for advice if you
> > haven't already
> > > done so.
> > >
> > > However, I believe the current IPR policy is a big step forward
> > > toward clarity. However, as you note, it is realistic to expect to
> > > contact patent holders for licenses as needed.
> > >
> > > Thanks
> > >
> > > regards, Frederick
> > >
> > > Frederick Hirsch
> > > Nokia
> > >
> > > [1] http://www.oasis-open.org/who/intellectualproperty.php
> > >
> > > On Apr 27, 2006, at 4:59 PM, ext Wachob, Gabe wrote:
> > >
> > > > This is a real basic questions that has been nagging at me for
> > > > quite a while.
> > > >
> > > > Lets say I want to use a OASIS specification (lets take
> > SAML 2.0 -
> > > > I'm not picking on them - but it makes a good
> > illustration). I note
> > > > that there are various IPR disclosures at
> > http://www.oasis-open.org/
> > > > committees/security/ipr.php - and some of these
> > disclosures state
> > > > that the patent owners *will* license their Patents for
> > the purpose
> > > > of SAML. Some express covenants not to assert claims.
> > Some point to
> > > > blanket licenses on web sites.
> > > >
> > > > If I were a lawyer I would find this situation a) confusing, b)
> > > > scattered and c) potentially dangerous. For example, on
> > that page,
> > > > Fidelty states that it "would grant to any other person or legal
> > > > entity a royalty-free, nonexclusive, nontransferable,
> > license under
> > > > Fidelity's NECESSARY CLAIMS to implement the SAML v2.0 OASIS
> > > > Standard, and sell, promote or otherwise distribute the
> > resulting
> > > > implementation. "
> > > >
> > > > Note the word "would". I don't see that Fidelty actually *has*
> > > > granted a license. Thus, while they would now have a hard time
> > > > enforcing the patent (given theories of estoppel, etc), I don't
> > > > believe that Fidelty actually *has* granted a license. It
> > appears
> > > > that I have to go to Fidelty and get a license if I wish to use
> > > > SAML. (Not picking on Fidelity - they are just first on
> > the list of
> > > > disclosers).
> > > >
> > > > Are people aware of this? Do users of SAML specifications
> > actually
> > > > know that they apparently aren't actually licensed to use the
> > > > patents that Fidelity believes it has? Doesn't this (or
> > rather, if
> > > > lawyers were paying attention, *shouldn't* this) be a concern? I
> > > > realize this TC operated under the legacy IPR policy - I
> > wonder how
> > > > that affects things.
> > > >
> > > > If a implementer/user of SAML were to actually be careful with
> > > > their use of the SAML specs, they'd actually have to contact
> > > > Fidelity to execute the license. I think this should be
> > > > highlighted! If a contributor wants to contribute, and
> > they don't
> > > > offer a covenant or other blanket license (or a URL to a blanket
> > > > license, etc), this potentially increases the friction
> > for adoption.
> > > >
> > > > In an ideal world, there'd be one patent license that
> > every patent-
> > > > holder contributor would agree to -- I'm not naive to
> > believe that
> > > > would happen (or that OASIS could force that to happen),
> > but I do
> > > > believe in notice. Only as a persistent person who actually read
> > > > the entire IPR disclosure page did I notice that to use SAML 2 I
> > > > have to somehow negotiate a license with Fidelity.. Most people
> > > > aren't going to do this and will be blissfully ignorant.
> > > >
> > > > I think as a practical matter, most patent holders who are
> > > > contributing to OASIS specs don't really want to deal with
> > > > individual licensing -- but OASIS IPR policy doesn't
> > really push or
> > > > guide patent holders to put up blanket unilateral
> > licenses -- its
> > > > up to each IPR holder to license (or covenant) in what ever way
> > > > they want.
> > > >
> > > > THE PROPOSAL:
> > > > I think, in short, that OASIS should guide patent holders
> > towards
> > > > the lowest friction licenses possible by suggesting (not
> > forcing)
> > > > patent holders to use a standardized license (or at least
> > suggest
> > > > that patent holders post a "click-through" or unilateral license).
> > > >
> > > > -Gabe
> > > >
> > > > P.S. If I'm wrong about any of the facts, please let me
> > know ... I
> > > > could have easily missed something.
> > > > __________________________________________________
> > > >
> > > > Chief Systems Architect
> > > > Technical Innovation and Standards Management
> > > > Visa International
> > > > Phone: +1.650.432.3696 Fax: +1.650.554.6817
> > > >
> > > >
> >
> >
