Gabe,
As a TC chair I've not had to cover IP on a spec' so I'm a
little surprised to find that this is not more formally addressed
in the OASIS specifications requirements.
I would expect something akin to:
a) All licensing requirements clearly stipulated as part of the body
of the specifications in a specific document section (beyond just the
normal OASIS license blurb).
b) Addendum entry that references points of contacts for members that
are asserting license claims
c) Reference to a ZIP file stored in the TC documents area that
contains a copy of each actionable license from each such member.
We could then go one step further and note that members who waive the
right to include such entries a) thru c) - are therefore providing a RF
license for any relevant IP they may adjudge to be applicable either
currently or subsequently later.
If this is not the case - I would suggest we ask the BOD to review
this urgently and create policy - before we get more IP related
specifications out there that are not clearly delimited.
DW
-------- Original Message --------
Subject: RE:
[chairs] Patent license friction...
From: "Wachob, Gabe"
<>
Date: Mon, May 01, 2006 2:11 pm
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
> > >
> > >
>
>
