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Fatal Weaknesses of the Patent Disclosure Rules: and the Unocal P atent Debacle

From: Peter DiMauro <pdimauro@icta.org>
Date: Thu, 11 Oct 2001 11:51:09 -0400
Message-ID: <3323A882D1F6D311B12D009027DC5BD20C9748@HAL>
To: "'www-patentpolicy-comment@w3.org'" <www-patentpolicy-comment@w3.org>
This is a substantive comment.

I browsed the W3C Patent Policy Framework , and one thing which I came away
with was the toothlessness of the "Good Faith Disclosure" rules.

I quote:

"An Advisory Committee representative is expected to circulate requests for
patent disclosure through the same channels as any other W3C material (such
as the W3C NewsWire, Newsletter, and W3C specifications) is distributed
within the Member organization. Disclosure obligations shall not obligate a
Member to conduct a search of its patent portfolio. No extraordinary effort
is required for patent disclosure requests, nor should such requests be
given lower priority than other communication efforts undertaken by the
Advisory Committee representative. Recipients of such material are expected
to respond, if at all, based on their actual, personal knowledge of their
organizations patent holdings and applications. No implied knowledge should
be imputed. At the same time, if individuals take advantage of information
from W3C Working Groups in formulation of patent strategy, they should make
appropriate disclosures in response to requests through circulated by the
Advisory Committee representative."

To repeat:
"Recipients of such material are expected to respond, if at all, based on
their actual, personal knowledge of their organizations patent holdings and
applications. No implied knowledge should be imputed."

This means that corporations can play a shell game. All a corporation has to
do to evade the disclosure requirements, is to send a representative to the
standards body, who has been "firewalled" from all knowledge having to do
with patents!!! Then the corporate member of the standards body can play the
"plausible deniability" game. I feel that the statement "No implied
knowledge shall be imputed" should be changed to "All implied knowledge
shall be imputed as a rebuttal presumption".

Furthermore, they define "Essential [Patent] Claims" in a very temporally
limited manner:

""Essential Claims" shall mean all claims in any patent or patent
application with an effective filing date within one year and one day after
the publication of the first Public Working Draft, in any jurisdiction in
the world, that a Member (or a licensor or licensee, with reference to
entities other than Members) owns, or under which a Member (or a licensor or
licensee) has the right to grant licenses without obligation of payment or
other consideration to an unrelated third party, that would necessarily be
infringed by implementation of the Recommendation."

Thus they exclude "Essential claims", those claims which are filed in the
Patent Office BEFORE publication of the first Public Working Draft! That
really sucks!! Everyone knows that members of standards bodies can run to
the patent office before such publication, as soon as they get wind of what
will become the adopted standard, or what is likely to become the adopted
standard. The definition of Essential Claims, makes such "insider trading"
permissible.

Anyone interested in the W3C Patent Policy Framework must be made aware of
the Unocal patent issue. The Unocal corporation operates oil refineries, and
participated in standards-settings bodies in California circa 1990,
regarding "reformulated gasoline fuels" (RFG), automotive fuels which would
meet new more stringent emission requirements in use. Some time before the
RFG standards were published, Unocal filed a patent covering all numerical
possibilities for gasoline parameters that might be adopted as the standard.
When the standard was adopted, they did a "picking and choosing" from among
the numbers in their patent application, to get claims actually issued as a
patent. Unocal has sued refinery operators nationwide for simply making
gasoline which meets California government standards. In return Unocal has
been countersued by ExxonMobil. The issue of "gaming the patent system" has
come up repeatedly.

Therefore, even in a "mature" industry such as oil refining, abuses can and
have clearly arisen when patents are allowed to mix freely with
standards-setting. Why should the W3C build-in abuse into their
definitions??

Peter T. DiMauro, Ph.D.
Registered Patent Agent
Project Director, Patent Watch
International Center for Technology Assessment
202.547.9359
pdimauro@icta.org 
http://patentwatchproject.org

-oo0oo-
Received on Thursday, 11 October 2001 11:34:51 GMT

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