Re: Proposed New Note Well

Hi,




On 1/4/16, 13:31, "ietf on behalf of Brian E Carpenter" 
<ietf-bounces(_at_)ietf(_dot_)org on behalf of 
brian(_dot_)e(_dot_)carpenter(_at_)gmail(_dot_)com> wrote:

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.


I don’t claim to be an experienced IP litigator, but I have spent many dozens 
of hours in court rooms dealing with essential patent cases, which may give me 
a bit of a “feeling” what could happen.  

IMO, the “benefits from” language extends the scope of what is currently 
codified in BCP79 with respect of disclosure requirements--people who, under 
the strictest interpretation of BCP79 (as of Jan 2016) may have had no 
disclosure obligation, may have one now.  IMO, it extends it in a sensible 
direction because it addresses to some extent some flavors of the mushrooming 
privateering problem.  For example, it is well known that certain companies in 
our industry (with employees participating in the IETF) have sold IETF 
essential patents to a troll, often below market value.  The troll goes and 
sues the competition.  The companies receive a certain (sometimes quite large) 
percentage of the royalties.  Under the strictest interpretation of BCP79 as 
written, the employees may not have a disclosure obligation, as their employer 
neither owns nor controls the patent anymore.  This is a loophole in BCP79 that 
has become quite a problem in our industry over the last few years.

If, after community review, the IETF at large decides that an extension of 
BCP79’s scope is what it wants, then why not put it in the Note Well?  One 
participates in the IETF under BCP79 as well as under the Note Well, and no one 
who ever signed up to mailing lists or attends meetings could successfully 
argue differently, right?  I doubt that courts would put great significance in 
the fact that one doc happens to be an RFC/BCP, the other a “mere" Note Well.  
Both are policy documents, both are well known, one is newer than the other so 
it’s logical that the newer one supersedes the older one in case of 
inconsistencies.  Nowhere in the current incarnation of BCP79 it is said that 
BCP79 deals with all aspects of patent IP, and all other docs are null and 
void.  All that could be argued just fine.  Really.

That said, if we get consensus that broadening the disclosure obligations is a 
Good Thing, and also to do that in the Note Well rather than working another 
decade on spinning a new BCP79, we better do not make misleading statements 
about one being a summary of the other, when they are not.

So my suggestion is to keep the “benefits from” language, but remove “The brief 
summary:” and all other references to “summary”.  Instead, make the Note Well a 
doc standing on its own.  

Stephan


  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