matter of public record, but details of pending claims can be
modified at any time by the claim submitter before the patent is
granted. It is not known before then what rights will actually be
granted. Finally, rights can be contested in court, and nothing is
final until the courts decide -- perhaps not even then. All the IETF
can expect regarding a pending patent is disclosure that it exists,
the related IETF documents, and possibly the relevant IETF document
sections and some statement about licensing terms.
5.5. Applicability: It’s Hard to Prove a Negative
Working group participants must make their own decisions about what
level of confidence they need as to whether IPR is applicable.
However, perfect knowledge is not a worthwhile goal.
In general, a working group should strive to find out about all IPR
claims related to technologies it is considering, and at least the
general facts about licensing terms for each case -- for example
whether the terms will be royalty-free, or perhaps "reasonable and
non-discriminatory". Working group participants should also
investigate possibilities of prior art which would counter the IPR
claims. However, even if the working group participants do
exhaustive searches, both externally and internally to their
employers, it is impossible to prove that a particular technology is
not covered by a particular IPR claim, let alone prove that it is not
covered by any IPR claim. Anything a working group adopts may, in
the future, turn out to be IPR-impacted, although the IPR claim may
not be discovered until years later. Claims are open to
interpretation even after rights are granted. Drafts can be very
fluid, even up to the time of last call, and IPR issues may
unknowingly be taken on at any time. Absolute certainty about IPR
claims is rare.
However, the level of confidence needed to consider IPR when
evaluating a technology is often not hard to get to. There are cases
where risk is high (e.g., where licensing terms may be onerous) and
thus a high level of confidence about applicability is needed, but
history shows that most of the time "rough" confidence is good
enough.
In all cases, licensing terms are a more significant consideration
than the validity of the IPR claims. Licensing terms often do not
limit the usefulness of the technology. It is difficult to be sure
about the validity of IPR claims. If the licensing terms can be
determined to be reasonable, then the IPR claims become much less
important.
5.6. Licensing Terms
Licensing terms vary across a range from no license required at all
to prohibitive. In general, working groups show a preference for
technologies with IPR considerations in approximately the following
order. This list does not constitute a rule, and every working group
needs to take its own circumstances into account.
o License not required.
o IPR licensed with no restrictions.
o IPR licensed with no material restrictions, e.g., no trademark
license required.
o IPR licensed for a particular field of use but with no other
material restrictions, e.g., licensed solely for implementations
complying with a standard.
o IPR licensed under royalty-free terms and reasonable and
non-discriminatory restrictions.
o IPR licensed under reasonable and non-discriminatory restrictions.
This may include payment of a royalty.
o IPR which is otherwise licensable.
o IPR which is not licensable, i.e., which is only available as an
implementation.
o IPR which is not available under any conditions.
Many IPR claimants do not like to publish specific terms under which
they will issue licenses. They may use standard terms for many
licensees, but they prefer to negotiate terms for some. Therefore,
do not expect any IPR disclosure statement to lay out detailed
blanket terms for licensing.
If an IPR disclosure statement lists only vague terms, that doesn’t
mean the terms that will be offered in individual licenses will be
any worse than those offered if an IPR disclosure makes very specific
statements. Obviously, if an IPR claimant refuses to suggest any
terms at all, the working group is going to have trouble evaluating
the future utility of the technology.
There is a class of restriction which involves "reciprocity", in
which intellectual property may be licensed if the licensee is
willing to license its intellectual property in return. The
specificity of such agreements can vary, and the same or similar
terms may be required. Another potential licensing restriction is
defensive suspension, where a licensor may revoke or suspend the
license if the licensee asserts a patent claim against the licensor.
For interpretation of any particular reciprocity or related issue,
consult your legal adviser.
Words such as "reasonable", "fair", and "non-discriminatory" have no
objective legal or financial definition. The actual licensing terms
can vary tremendously. Also, IPR claimants have occasionally
asserted that there were already sufficient licenses for a particular
technology to meet "reasonable" multisource and competitiveness
requirements and, hence, that refusing to grant any licenses to new
applicants was both fair and non-discriminatory. The best way to
find out what an IPR claimant really means by those terms is to ask,
explicitly. It also helps to gather knowledge about licenses
actually issued, for that technology or for others, and about other
experiences with the IPR claimant.
Despite the fact that IPR claimants often don’t like to publish
explicit terms, there are levels of vagueness, and individuals and
even working groups can sometimes successfully push an IPR claimant
toward less vagueness. Many employers of IETF participants know that
the IETF prefers explicit terms, and do feel pressure to produce
them.
If working group participants are dissatisfied with the confidence
level they can obtain directly about licensing terms for a particular
technology, they can possibly extrapolate from history. In order for
licensed technology to become a draft standard, at least two
independent licenses need to have been issued. If the IPR claimant
for the technology the working group is considering has licensed
other technology in the past, there is a record of the sorts of terms
they are willing to grant, at least in those specific cases. This
sort of thing is weak but everything counts, and it may be of some
help.
In many jurisdictions that issue patents, inventors are required to
file patent applications within 12 months of public disclosure or use
of a novel method or process. Since many of these jurisdictions also
provide for publication of pending patent applications 18 months
after a patent application is filed, the ability to determine whether
or not claims have been made at all relating to a particular
technology increases 30 months (12 + 18) after the public disclosure
or use of that technology.
5.7. Third-Party Disclosure of IPR Claims
It is good to notify the IETF of relevant IPR claims even when they
are not one’s own, and [6] says to do so "as soon as possible".
However, anyone considering such a disclosure should do some
preliminary exploration with the affected working group(s) beforehand
(see Section 5.7.1). Third-party disclosure is a potential denial of
service threat to the working group, and therefore it is good form to
proceed slowly at first.
Working group participants should be aware that third-party
disclosure can be used, knowingly or unknowingly, to defocus and
distract the working group and hinder its progress. They should
evaluate third-party disclosures accordingly. Working group chairs
should be willing and able to discipline those they think are using
the third-party disclosure system inappropriately. Those who think
they are being unfairly blocked may take the matter up with the Area
Directors and/or the IESG.
All of the criteria for evaluating IPR claims discussed in the
sections above apply in the case of third-party disclosures as well,
to the extent they can be practiced.
5.7.1. Third-Party Disclosure Advice
This subsection provides advice to those considering making
third-party disclosures. While not required, the actions described
here are encouraged to aid working groups in dealing with the
possible implications of third-party disclosures. In evaluating what
(if anything) to do in response to a third-party disclosure, a
working group may consider the extent to which the discloser has
followed this advice (for example, in considering whether a
disclosure is intended primarily to defocus and distract the working
group).
In general a potential discloser should exchange mail with the
working group chair(s) first, to open the way for discussion. Also,
if the potential discloser is not sure if the IPR claim applies, this
is the time to reach some kind of agreement with the working group
chair(s) before saying anything publicly. After discussion with the
working group chair(s), the potential discloser should bring the
issue to the attention of the working group, and to the attention of
the IPR claimant if doing so is not too difficult. Such discussion
should help the potential discloser to become more sure, one way or
the other. If the potential discloser is sure the discovered IPR
claim applies, and the IPR claimant does not submit a first-party
disclosure itself, then the potential discloser is encouraged to
submit a third-party disclosure.
Intellectual property often applies to more than one working group.
A person thinking of making a third-party disclosure should consider
what other working groups might be affected, and communicate with
them in the same manner.
Don’t bring up IPR issues that are unrelated to the areas where the
working group is focusing at that time. Don’t bring IPR claims to
the working group’s attention just in case they might be relevant in
a few months, but only if they have implications for current work.
Messages to the working group list should be substantive, and a
single message should focus on a specific issue. They can reference
multiple claims or patents related to that issue.
6. Security Considerations
This memo relates to IETF process, not any particular technology.
There are security considerations when adopting any technology,
whether IPR claims are asserted against it or not. A working group
should take those security considerations into account as one part of
evaluating the technology, just as IPR is one part, but they are not
issues of security with IPR procedures.
7. Acknowledgments
The author would like to acknowledge the help of the IETF IPR Working
Group. The author would also like to thank the following for their
extensive comments and suggestions: Robert Barr, David Black, Scott
Bradner, Jorge Contreras, Paul Gleichauf, Keith Moore, Russell
Nelson, Jon Peterson, Randy Presuhn, Pekka Savola, Valerie See, Bob
Wyman, and Joe Zebarth.
8. References
8.1. Normative References
[1] Huitema, C. and P. Gross, "The Internet Standards Process --
Revision 2", RFC 1602, March 1994.
[2] Postel, J., "Addendum to RFC 1602 -- Variance Procedure", BCP 2,
RFC 1871, November 1995.
[3] Kastenholz, F., "Variance for The PPP Connection Control
Protocol and The PPP Encryption Control Protocol", BCP 3, RFC
1915, February 1996.
[4] Bradner, S., "The Internet Standards Process -- Revision 3", BCP
9, RFC 2026, October 1996.
[5] Bradner, S., Ed., "IETF Rights in Contributions", BCP 78, RFC
3667, February 2004.
[6] Bradner, S., Ed., "Intellectual Property Rights in IETF
Technology", BCP 79, RFC 3668, February 2004.
8.2. Informative References
[7] Wu, T., "The SRP Authentication and Key Exchange System", RFC
2945, September 2000.
9. Author’s Address
Scott Brim
Cisco Systems, Inc.
146 Honness Lane
Ithaca, NY 14850
USA
EMail: sbrim@cisco.com
10. Full Copyright Statement
Copyright (C) The Internet Society (2004). This document is subject
to the rights, licenses and restrictions contained in BCP 78 and
except as set forth therein, the authors retain all their rights.
This document and the information contained herein are provided on an
"AS IS" basis and THE CONTRIBUTOR, THE ORGANIZATION HE/SHE
REPRESENTS OR IS SPONSORED BY (IF ANY), THE INTERNET SOCIETY AND THE
INTERNET ENGINEERING TASK FORCE DISCLAIM ALL WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO ANY WARRANTY THAT THE USE OF
THE INFORMATION HEREIN WILL NOT INFRINGE ANY RIGHTS OR ANY IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
Intellectual Property
The IETF takes no position regarding the validity or scope of any
Intellectual Property Rights or other rights that might be claimed
to pertain to the implementation or use of the technology
described in this document or the extent to which any license
under such rights might or might not be available; nor does it
represent that it has made any independent effort to identify any
such rights. Information on the procedures with respect to
rights in RFC documents can be found in BCP 78 and BCP 79.
Copies of IPR disclosures made to the IETF Secretariat and any
assurances of licenses to be made available, or the result of an
attempt made to obtain a general license or permission for the use
of such proprietary rights by implementers or users of this
specification can be obtained from the IETF on-line IPR repository
at http://www.ietf.org/ipr.
The IETF invites any interested party to bring to its attention
any copyrights, patents or patent applications, or other
proprietary rights that may cover technology that may be required
to implement this standard. Please address the information to the
IETF at ietf-ipr@ietf.org.
Acknowledgement
Funding for the RFC Editor function is currently provided by the
Internet Society.