RE: [chairs] Patent license friction...

Robert,

 

We could provide an OASIS mailing list / RSS feed that people could
subscribe to for official OASIS specification news.  Actually
folks may like that - you'd only get news relating to spec's - nothing
else.  So formal announcements of releases, new versions and such
- and we could prefix the message subject line with [spec-id]
- so people could filter and alert on only the spec's they are
interested in...

 

DW

-------- Original Message --------
Subject: RE:
[chairs] Patent license friction...
From: "Philpott, Robert"
<>
Date: Tue, May 02, 2006 10:12
am
To: "David RR Webber (XML)" <>
Cc:
"Chairs OASIS" <>, "Frederick
Hirsch"
<>, "John
Messing"
<>, "Wachob,Gabe"
<>

From:
David RR Webber (XML) [mailto:] 
Sent: Tuesday, May 02, 2006 9:57
AM
To: Philpott,
Robert
Cc: Chairs
OASIS; Frederick Hirsch; John Messing; Wachob,Gabe
Subject: RE: [chairs] Patent
license friction...

 

Robert,

 

Thanks for clarifying all
this. 

 

It might be an idea to add a colour coded
column to this table - 

 

 http://www.oasis-open.org/specs/

 

to indicate which ones are RF and which ones
require licensing for implementers - as right now everything is
lumped together - and people may be forgiven for thinking these
being all publicly approved spec's means they are all open and public
licensing as well.

[RSP] Seems reasonable to
me.

 

I understand the need to be able to keep
everything in synch'.  I'm not sure that decoupling the IP needs
from the spec' however is necessarily turning out in practice to be the
best / least confusing approach.  We could always allow
adminstrative corrections to specifications directly when IP needs
change - that would cover off the points you raise.  That way we
have just one place for everything - the specification
download.

[RSP] we could allow administrative
updates, but then folks need to learn about the updates and those that
have previously downloaded the approved standard would have to come
back to get the new one.  That doesn’t seem too practical to
me, but I’m open to being convinced
otherwise.

 

One question though - if I sign an agreement -
and then subsequently the terms change - do I have to re-sign? 
Seems like we probably have to have that covered in the IP assignment
clauses that OASIS asks for - so grandfathering can
occur.

[RSP] seems to me it depends on the license
TERMS. It gets pretty messy if you change the terms of the
licensing.  In our case, we’re moving from an active
licensing process to a defensive suspension process.  The actual
terms aren’t changing as they are both Royalty Free/Reasonable
and Non-Discriminatory (RF/RAND).  Just the licensing process
changed (we just made it easier – getting rid of the
download/sign/return).

 

It would be a BAD idea to permit someone to
change their licensing terms and (I don’t recall this off the top
of my head), but that may already be disallowed by
OASIS.

 

DW

 

 

-------- Original Message --------
Subject:
RE: [chairs] Patent license friction...
From: "Philpott, Robert"
<>
Date: Tue, May 02, 2006 9:40
am
To: "David RR Webber (XML)" <>,
"Wachob,Gabe"
<>
Cc: "Chairs OASIS"
<>, "Frederick
Hirsch"
<>, "John Messing"
<>

 

From: David RR Webber (XML)
[mailto:] 
Sent: Monday, May 01, 2006 9:19 PM
To: Wachob,Gabe
Cc: Chairs OASIS; Frederick
Hirsch; John Messing
Subject: RE: [chairs] Patent license
friction...

 

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).

[RSP] As IP issues can arise at
any time, including after the spec has been approved, I feel that
putting such info in the spec is not a good idea since it could end up
being incomplete unless you rev the spec.  The current document
template refers people to the IPR page on the TC web site and, IMO,
that should remain the authoritative, single place to go look for IP
claims and the required licensing for those claims. If the web site is
not clear, especially on the licensing process, TC administration
should address it with the IP claimants and get it corrected.  But
I personally don’t want to see this stuff going in the
specs.

 

b) Addendum entry that references points of
contacts for members that are asserting license
claims

[RSP] As I said, IMO, the web
site is sufficient.

 

c) Reference to a ZIP file stored in the TC
documents area that contains a copy of each actionable license from
each such member.

[RSP] This MIGHT be a
reasonable thing to do, but since companies sometimes change their
contract and licensing forms or update license wording, they might not
want to do this, and it runs the risk of becoming incomplete as well.
 Also, since some IP might be asserted by companies that are not
OASIS members, you’d not likely get them to provide such a file
to include in the ZIP
file.

 

I don’t believe the web
site says this, but if other non-member IP claims are known, there
probably SHOULD be a place on the TC IPR page to at least mention that
and hopefully list who they are.  I’ll also point out that
the IPR pages could be organized a bit better.  Just putting some
links at the top to each of the individual declarations would be
helpful. As it is now, it’s just a set of letters appended to
each other and you have to just scroll through
them.

 

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. 

[RSP] I certainly don’t
feel that it’s not clear who has made IP claims on SAML
(they’re all on the web page at http://www.oasis-open.org/committees/security/ipr.php);
the TC process is quite clear about soliciting claim info from members
and getting those declarations posted. However, the licensing process
in the Fidelity statement IS currently ambiguous. This was actually
pointed out to them recently and we’ve been working with them to
get that fixed (it’s almost done).  The licensing process
for the AOL and RSA claims however are quite clear.  AOL uses a
defensive suspension provision (i.e. you don’t have to do
anything to get an RF/RAND license, but if you bring any IP claims
against them, you lose that license).  The current RSA process
states that implementers MUST download/sign/return a license from the
RSA web site (link is provided).  Note that this will be changing
very shortly as we have submitted a new letter to OASIS in the past few
days that changes our process to a defensive suspension provision, ala
the AOL declaration. 

 

IMO, if there are TC’s
with encumbered specs that don’t have clear info on their TC IPR
page for users of the specs, then that is a problem that TC
administration should address with the TC.  I don’t think we
need additional, multiple places to put the info where the possibility
arises for one (i.e. the specs, a ZIP file) to become
out-of-date.

 

It’s always a technology
adopter’s responsibility to find out whether they are using
someone else’s IP, and if so, properly licensing that IP. 
The current OASIS process is clear on how to locate that info. OASIS
can and should make sure that the info is clear on the licensing
process for each claim, but that’s a relatively minor admin issue
IMO. Once the claims and licensing process are declared,it’s the
responsibility of the IP holder to monitor industry use of their IP and
ensure that users are licensed. Otherwise, I believe they run the risk
of losing their rights to the IP because they didn’t attempt to
defend their claims – obviously IANAL so take this with a grain
of salt J)