Re: Proposed New Note Well

On 05/01/2016 09:36, Scott O. Bradner wrote:

On Jan 4, 2016, at 3:21 PM, John C Klensin <john-ietf(_at_)jck(_dot_)com> 
wrote:

Scott,

I think this actually muddies the issue.  We've actually got two
separate disclosure rules. Summarizing them in different
language (and after reviewing what is in the RFCs), they are:

(1) If you are personally involved with a patent and/or you or
your organization claim ownership or some other beneficial
interest in it that you know about (or might reasonably be
expected to know about), then you are _required_ to disclose.


unless you do not “participate” in the standards process relating to that IPR
(see RFC 3979 section 6.1.2 - only binding on a person participating in a 
discussion)

this is the issue that stalled the previous attempt by the IESG to redo the 
Note Well
the previous version stated the requirement as you did - an absolute 
requirement 
to disclose if you have knowledge of “your” iPR - a number of people pointed
out that this was not a accurate description of the rules

also the “benefit” language was trying to help with the “owns” case - it is 
not just that you 
or your organization owns the patent - it also covers the case where you or 
your organization
has the right to license the patent to others and the case where you or your 
or your organization
will receive money (or other consideration) from some party who has the right 
to license the patent to others


To be clear, adding a legally precise definition of the "benefits from" case to
BCP 79 would, IMHO, be a good idea. But since it is not currently defined there,
the proposed Note Well language, IMHO, misrepresents what the BCP says.

IANAL, so a view on this from an experienced IPR litigator would be useful.

   Brian


(2) If (1) does not apply but you happen to know about the
patent claims anyway, you are encouraged to disclose but are
under no formal requirement to do so.

The second is particularly important to those of us who might
get a call from someone saying "TrollCo claims it has patent
rights that cover such-and-such.  Do you have an opinion about
that with regard to either applicability or validity?"   Because
even the asking of questions like that may be covered by NDAs,
the exact IETF requirements are fairly important.


yup - I’m well in that boat myself


As usual, what this suggests to me is that the Note Well should
avoid saying things that are misleading.


or leave things out in a way that is misleading

Scott

That, in turn, means
either sticking to general advice and pointing to the relevant
documents (in that sense, this attempted revision seems to be a
step in the right direction) or being very specific and precise.
The proposed language in this area seems to be neither.

Similarly, 



--On Tuesday, January 05, 2016 08:37 +1300 Brian E Carpenter
<brian(_dot_)e(_dot_)carpenter(_at_)gmail(_dot_)com> wrote:

On 05/01/2016 05:05, John C Klensin wrote:
...

In particular, don't say "By participating with the
IETF, you agree to follow IETF processes and policies" and
then identify only a few of them as if they were the complete
list.


I thought about trying to express that in my rewrite, but
couldn't see an easy way to cover it. As I repeat from time to
time, the hard way to cover it is
http://www.ietf.org/about/process-docs.html . Good luck in
trying to summarise that for the Note Well.


But that suggests that either the Note Well should be about IPR
and should say to, possibly adding a sentence there are lots of
important non-IPR policies of which people need to be aware or,
difficult or not, it should be comprehensive.  Picking one
handful of policies and ignoring others seems like a recipe for
trouble unless the boundary or stopping rule is clearly
identified.  As you suggest above, good luck with that
delineation as well as with the comprehensive summary. 

   john




--On Monday, January 04, 2016 14:48 -0500 "Scott O. Bradner"
<sob(_at_)sobco(_dot_)com> wrote:

ps - stated better in RFC 3979 sec 6.6

6.6.  When is a Disclosure Required?

  IPR disclosures under Sections 6.1.1. and 6.1.2 are
required with    respect to IPR that is owned directly or
indirectly, by the    individual or his/her employer or
sponsor (if any) or that such    persons otherwise have the
right to license or assert.

On Jan 4, 2016, at 2:41 PM, Scott O. Bradner <sob(_at_)sobco(_dot_)com>
wrote:

• If you are aware that any contribution to the IETF is
covered by patents or patent applications that are owned
by, controlled by, or would benefit you or your sponsor,
you must disclose that fact, or not participate in the
discussion.


Where does "or would benefit" come from in BCP 79? While I
agree with the sentiment, I don't think it follows from our
rules, so I think it must be deleted.


the concept comes from (for example) RFC 3979 section 6.1.3
6.1.3.  IPR of Others

 If a person has information about IPR that may Cover IETF
 Contributions, but the participant is not required to
 disclose because they do not meet the criteria in Section
 6.6 (e.g., the IPR is owned by some other company), such
 person is encouraged to notify the IETF by sending an email
 message to ietf-ipr(_at_)ietf(_dot_)org.  Such a notice should be sent
 as soon as reasonably possible after the person realizes
 the connection.

i.e. the text is trying to deal with the case where you know
of IPR but it is not "yours"

this seemed to be a clean way to express the condition - just
eliminating the phrase would, imo, make it harder to
understand when disclosure is required -  other ways to get
the point across would be helpful

Scott