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Re: Last Call on draft-bradner-rfc3979bis-08.txt ("Intellectual Property Rights in IETF Technology")

2016-04-05 08:29:56
Mike, all,
Referring only to this:





On 4/4/16, 21:30, "ietf on behalf of Michael Cameron" 
<ietf-bounces(_at_)ietf(_dot_)org on behalf of 
michael(_dot_)cameron(_at_)ericsson(_dot_)com> wrote:

[...]
Also, because no-one should be expected to predict the outcome of the 
uncertain patent prosecution process, the phrase "may ultimately Cover that 
Contribution" should be deleted in Section 5.1.2. 

Thus, I would propose Section 5.1.2 be amended as follows:

If an individual Participates relative to a written Contribution (other than a 
Contribution that is not intended to be used as an input into the IETF 
Standards Process) made by another person and such Participant    personally 
knows of IPR meeting the conditions of Section 5.6 which the Participant 
believes Covers, or which the Participant personally knows his or her employer 
or sponsor may assert against Implementing Technologies based on such written 
Contribution, then such Participant must make a disclosure in accordance with 
this Section 5.
[...]

My current feeling is that the removal of the “ultimately covered” phrase would 
have the opposite effect you apparently desire.  It would lead to more 
irrelevant disclosures, not less.

The definition of “Cover” is fairly broad, and includes not only "claims of 
patent and applications (including provisional applications)”, but also “other 
IPR”, and that IPR, in my interpretation, would also cover provisional 
applications without claims.  In other words, from the definition of “Cover” 
alone it is already clear to me that a discloser must take into account 
applications with all the uncertainty of the prosecution process that entails.  
That’s intentional, and hopefully not subject of this discussion.  We 
definitely want people to disclose applications, as early in their respective 
process as possible.  

The phrase “ultimately covers” gives some wiggle room to cut down on 
disclosures of applications that ultimately may not cover the Contribution, but 
would based on the claims currently on file.  I, at least, have interpreted 
that phrase in the past (yes, it is present in RFC 3979) such that if I were 
certain that an overbroad claim--like those routinely filed by European-trained 
lawyers when filing US provisionals--will not survive prosecution unamended, I 
would determine my disclosure requirement based on my interpolation of a claim 
that I think can realistically survive.  I happen to know that at least two IPR 
departments advised their IETF delegates to act similarly.  Doing so cuts down 
on the disclosure of applications that are not likely relevant to the 
Contribution, while still preserving timeliness of disclosures, including 
disclosures against provisionals.  

This is “running code”, as we call it in the IETF.  Unless I see a very clear, 
very detailed explanation (including case law if available) why it is bad, I 
would be very reluctant to support a change.

Stephan




 






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