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

On 07/12/2010 02:48 PM, Arnaud Le Hors wrote:
> 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.

I agree.

> 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.

Right.
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> 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.

I would propose a different set of requirements for the IPR policy to be used by these groups (whatever they are called):

- it should be such that both patent owners and patent users feel comfortable with it (or, to put it in more realistic terms, it should be such that both owners and users feel equally uncomfortable with it)
- it should be such that it would provide a protective umbrella not only to those who participate in the group, and not only to W3C members, but to all [excluding protection from third party so-called trolls, of course, whose actions cannot be protected against, under any circumstances]
- it should be such that participating patent owners cannot game the system by submarining their inventions
- it should be such that participating patent users cannot force patent owners to license RF against their will
- it should be such that users do not have to wait until the very end of the process to know whether there is protection for their use of the group's output
- it should be such that a patent owner cannot walk away from it at the last minute, thus rendering useless a sustained collective effort engaged in good faith by most.

Of course the PSIG will find the right IPR policy that ensures all this in just a couple of days ;-) One can only dream.

I do envision the possibility of having two patent policies in parallel for a while, the existing one and an experimental one for these incubator/fast-forward groups.

>
> 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
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> 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
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> [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]
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> 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.
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> 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).
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> 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.
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> 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.
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> 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.
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> The following is a brief FAQ specifically to explain these provisions in the W3C context:
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> 1. *What is the importance for a contributor's patent portfolio of the last sentence of section 10.7?*
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> 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/.
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> 2. *Are there any un-Permitted Uses?*
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> 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.
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> 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.
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> 4. *Why doesn't OWF use a patent license rather than a patent non-assert?*
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> 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.
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> 5. *What about the copyright grants?*
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> 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.
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> 6. *What about opt-out for patent claims?*
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> 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.
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> 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.
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> 8. *What if a company doesn't sign the OWFa?*
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> 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/.
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> 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.
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-- 
Eduardo Gutentag
Director, Standards Strategy&  Policy
Oracle Corporate Architecture Group

Phone:  +1 510 550 4616
Fax:    +1 510 550 4616
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