The OWF Approach to patents for light-weight standards

[The following email reflects my own views only and does not indicate a
commitment by anyone involved in Open Web Foundation to adopt any particular
language in its model agreements. That work is in progress. I copy the OWF
Legal Drafting Committee to inform them that our work is interesting to some
in W3C.  /Larry]

 

 

Following our discussion at the W3C New Standards Task Force, I was asked to
describe the Open Web Foundation (OWF) patent approach to "light-weight"
standards. I caution that what I disclose here is preliminary and in DRAFT
form, and may differ substantially from what is finally approved under OWF
procedures. We do, however, welcome input. The OWF Legal Drafting Committee
is open to anyone upon application. Let me know if you are interested.

 

For easy reference, these are three important paragraphs from the latest
draft of the OWF Contributor Agreement (CLA). I describe them in FAQ format
below. If our current proposal is accepted (and it is currently ONLY A
DRAFT!), we would also include these terms - but NOT the highlighted final
sentence of section 10.7 - in the new OWF Agreement (OWFa version 1.0).

 

3.1.1. The Promise.  I, on behalf of myself and my successors in interest
and assigns, irrevocably promise not to assert my Granted Claims against you
for your Permitted Uses, subject to the following. This is a personal
promise directly from me to you, and you acknowledge as a condition of
benefiting from it that no rights from me are received from suppliers,
distributors, or otherwise in connection with this promise.

 

10.6  Permitted Uses.  "Permitted Uses" means making, using, selling,
offering for sale, importing or distributing any implementation of the
Specification 1) only to the extent it implements the Specification and 2)
so long as all required portions of the Specification are implemented.
Permitted Uses do not extend to any portion of an implementation that is not
included in the Specification.

 

10.7  Granted Claims.  "Granted Claims" are those patent claims that I own
or control, including those patent claims I acquire or control after the
Date below, that are infringed by a Permitted Use. Granted Claims include
only those claims that are infringed by the implementation of any portions
of the Specification where the Specification describes the functionality in
detail and does not merely reference the functionality. Granted Claims
exclude those patent claims that would be infringed by an implementation of
the Specification if my Contribution to that Specification were removed.

 

 

The following is a brief FAQ specifically to explain these provisions in the
W3C context: 

 

1.            What is the importance for a contributor's patent portfolio of
the last sentence of section 10.7?

 

That sentence reflects the proposed development track of light-weight OWF
Specifications, for most of which there will be no clear, unambiguous
scoping plan approved in advance. The expectation is that innovation will
happen in chaotic and unplanned ways. During the development of a
Specification before it is finalized for publication, as provided in the
Contributor License Agreement (DRAFT CLA version 1.0), Granted Claims
exclude patent claims that would be infringed by the rest of the
Specification alone. (The final sentence is included in the CLA.) Thus
contributors can avoid patent grants forced solely by the contributions of
others. But after the development work is done and when the final
Specification is ready for publication, then every contributor will be asked
to sign an OWFa 1.0 (also now in DRAFT) that broadens Granted Claims to
include those infringed by the entire Specification. (The final sentence is
not included in the OWFa.) At this point, the patent commitment of all OWFa
signatories must be to the Specification as a whole.

 

2.            Are there any un-Permitted Uses?

 

Perhaps not. The definition of Permitted Uses is intentionally stated in the
affirmative. Because there are no explicit un-permitted uses, this patent
non-assert is similar to the affirmative but limited patent grants in many
open source licenses and should be fully compatible with such licenses. As
long as you are doing one of the Permitted Uses, the non-assert of section
3.1.1 applies and you need fear no patent infringement lawsuit by a
Contributor to the Specification. However beware: Outside of that zone of
patent protection, no promises apply. Everyone is individually responsible
for evaluating the patent landscape for other implementations that do not
satisfy conditions 1) and 2) in section 10.6. 

 

3.            What is the relationship between OWF's "Granted Claims" and
W3C's "Necessary Claims"?

 

In W3C and many other standards organizations, the set of claims that
contributors actually license, the "Necessary Claims", is rather small. If
there are multiple ways of doing a function, and a contributor's patent
claim is thus not truly "necessary", there is no patent grant. In the DRAFT
OWF Contributor Agreement and the DRAFT OWFa, however, granted patent claims
are those that are functionally described in detail in the Specification. So
a patent owner need merely read the Specification in order to determine
whether any of its patent claims are granted because they are functionally
described in detail. And the authors of a Specification are similarly
encouraged to describe in detail any functionality for which they want to be
granted patent licenses by their Contributors. Furthermore, there is no
longer an awkward distinction between required and optional portions of
Specifications. Although there is no requirement as such to implement
anything other than required portions in order to obtain a non-assert to the
Granted Claims for Permitted Uses, the goal is to encourage everyone to
implement as much of a Specification as they possibly can. The Permitted
Uses and Granted Claims extend to the entire specification including its
optional portions.

 

4.            Why doesn't OWF use a patent license rather than a patent
non-assert?

 

There are other provisions of the CLA and OWFa that you don't see above.
There is a provision that will allow companies or other standards
organizations (e.g., W3C or OASIS), if they prefer, to receive a patent
license rather than this non-assert. The OWF CLA and OWFa both include a
promise to grant a royalty-free licenses on non-discriminatory terms.

 

5.            What about the copyright grants?

 

There is of course one of those in the OWF Copyright Agreement and in the
OWFa. I didn't include those provisions above. That copyright grant is
immediate, perpetual, non-revocable and broad. Once a company or its
employee makes a Contribution to a Specification, the bell is rung and it
cannot be recalled - for copyright purposes. That copyright grant is broad
enough to satisfy all open source and proprietary software distribution
models. It does not include a prohibition on forking the Specification,
however, so it is different from the W3C copyright license.

 

6.            What about opt-out for patent claims?

 

There is another provision in the OWF Contributor License Agreement, but not
in the OWFa, that provides a limited 45-day patent opt-out period for
contributions. This limited opt-out applies only to the Granted Claims under
the patent non-assert, not to the copyright grant.

 

7.            What about defensive termination?

 

There are provisions for that elsewhere in the OWF Contributor Agreement and
the OWFa. We are still discussing the wording in the OWF Legal Drafting
Committee. The goal is to protect the Specification and its contributors,
implementers and users from patent infringement claims by third parties.

 

8.            What if a company doesn't sign the OWFa?

 

Beyond the 45-day limited opt-out period, Granted Claims that would be
infringed by the Specification including the Contribution are already
irrevocably non-asserted under the terms of the CLA. Subsequently signing
the OWFa is voluntary. Once the OWFa is signed, however, who made which
contribution no longer matters; the non-assert is as to the entire
Specification.

 

9.            What about disclosure obligations?

 

The Open Web Foundation does not concern itself with procedural or good
faith requirements of participants in the Specification drafting process. If
the OWF Contributor Agreement and the OWFa were adopted into the W3C
Incubator Process for which there might be contractual commitments, then all
those externalities would have to be integrated into the process.