Re: The OWF Approach to patents for light-weight standards

While I understand the IP issue is an important one that definitely needs 
to be addressed I don't think this is the group to do so. I'd rather we 
stick to describing the light weight process we think W3C should adopt, 
list the requirements we think need to be fulfilled to remove the barriers 
we've identified in therms of IP, and stop there. The PSIG or some other 
such group can take it from there and come up with the solution to the IP 
problem. I don't think it is for us to delve on this and come up with a 
proposed solution.

For what it's worth, I would think it is acceptable for this group to 
conclude for instance that we need a policy that allows people to easily 
join an incubator group with minimal (possibly no?) legal burden, and 
which allows transitioning to the Rec track later. We don't need to decide 
what this policy looks like, whether it is based on any particular license 
or framework, be it Creative Commons, MIT, OWFa or whatnot. This all 
should be decided elsewhere.

If we don't agree on that and you guys think it is for us to come up with 
a legal proposal then I will have to call onto my lawyers (you've been 
warned. ;-)
--
Arnaud  Le Hors - Program Director, Global Open Standards, IBM Open Source 
& Standards Policy




From:   "Lawrence Rosen" <lrosen@rosenlaw.com>
To:     <public-vision-newstd@w3.org>
Cc:     <open-web-legal-drafting@googlegroups.com>, "'Karen Sandler'" 
<karen@softwarefreedom.org>
Date:   07/12/2010 12:41 PM
Subject:        The OWF Approach to patents for light-weight standards
Sent by:        public-vision-newstd-request@w3.org



[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.