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

On 12 Jul 2010, at 3:34 PM, Lawrence Rosen wrote:

> I agree with Arnaud. This New Standards Task Force is not the place  
> to talk IP rules. I wrote my email merely because some of you  
> expressed curiosity, and to prove that, once this W3C New Standards  
> Task Force decides what we need, our IP provisions can be re- 
> targeted in creative ways to make light-weight standards succeed.

Thanks for taking the time to write up your thoughts, Larry.

Because the licensing question seems to be an important element I did  
not want to punt to the PSIG until we had had a chance  to talk just a  
bit.

I don't expect this task force to suggest legal language or to solve  
the legal issues. I do plan to work with the PSIG on those questions  
(and have told them so).

  _ Ian

>
> Anyone who wants to – please apply to participate at OWF, either on  
> our broad-topic and low-traffic OWF discussion list, or on our  
> narrow-topic but high-traffic legal-drafting list. Lawyers preferred  
> but not required on the legal-drafting list, because we are easier  
> to involve in boring detailed drafting work where we argue at length  
> about specific words and about difficult legal concepts.
>
> Arnaud, please get your lawyers involved. You've warned me, but I  
> welcome it.
>
> /Larry
>
>
>
> From: public-vision-newstd-request@w3.org [mailto:public-vision-newstd-request@w3.org 
> ] On Behalf Of Arnaud Le Hors
> Sent: Monday, July 12, 2010 2:49 PM
> To: public-vision-newstd@w3.org
> Subject: 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  
> arefunctionally 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.
>
>
>

--
Ian Jacobs (ij@w3.org)    http://www.w3.org/People/Jacobs/
Tel:                                      +1 718 260 9447

Received on Tuesday, 13 July 2010 21:40:22 UTC