- From: Florian Weimer <fw@deneb.enyo.de>
- Date: Mon, 01 Oct 2001 00:04:44 +0200
- To: www-patentpolicy-comment@w3.org
[A PDF version with additional markup is availble at:
http://www.s.netic.de/fw/w3c-patent-policy-2001-09-30.pdf]
Comments On The W3C Patent Policy Framework Draft
Florian Weimer
Abstract:
This document expresses some concerns regarding the W3C Patent Policy
Framework, W3C Working Draft 16 August 2001,
http://www.w3.org/TR/2001/WD-patent-policy-20010816/.
Our concerns range from general problems due to the proliferation of
patents in Web-related areas, over a few editorial issues with the
Draft, to design defects in the protocol outlined in the Draft.
1 The Effect Of Patents
In this document, unless explicitly noted, the term patent refers to a
right granted by government to an inventor which gives the inventor a
monopoly (usually limited in time) in the exploitation of a specific
invention, in exchange for public disclosure of said invention. In
some jurisdictions, this definition is broader than what is commonly
called a patent (see section 2.1 for details).
1.1 Patents, The Internet, and Web Technology
There is an ongoing debate whether patent-based monopolies, originally
implemented in law to encourage research, stiffle innovation in the
Internet and Web technology sector. We have reservations towards
patents in general, but the currently existing combination of
patentable trivialities, poor patent review, low patent description
quality, huge delays, and the wide neglect of patent research during
protocol design and software development makes it hard to believe that
the benefits of full disclure outweigh the detrimental effect of
monopolies on markets.
However, patents are an existing factor, and the World Wide Web
Consortium has to take them into account, even though patents are a
burden for open standards. A Patent Policy reflecting the current
problems is therefore necessary. However, W3C should be careful in
oder not to destroy their authority on Web standards by adopting a
policy which results in open, but unimplementable to many standards.
Since other submitted comments on the Draft already give strong
arguments against the shift in favor of patent holders, in the
following, we mainly address issues with the proposal itself, under
the hypothesis that the reasonable, non-discriminatory licensing terms
model is acceptable to some degree and is implemented according to the
Draft, although the author strongly believes that the political and
practical implications do not lie in the interests of W3C and its
Members.
1.2 Delayed Enforcement Of Patents
Unlike trademarks, which are weakened if the owner neglects to enforce
them, patents can be enforced very selectively in most jurisdictions.
In the form of Delayed Enforcement of Patents (DEP), this property of
patents poses the main threat to an infrastructure of open standards.
Because of the likelyhoid of Unintended Patent Infringement (UPI), the
DEP threat is very real. Unlike copyright infringement and breach of
non-disclosure agreements, patent infringement cannot be avoided by
clean-room protocol design or software development. In some areas of
technology, unintended infringement is very likely since a large
number of trivial patents have been granted, or patents covering the
nature of a problem and not its solution.[1]
Note that it is not in the interest of a patent holder (especially the
holder is not engaged in W3C activities, for example, because it is
patent-collecting company, and not a software developing one) to alert
a Working Group of UPI situations, especially if the Recommendation
being drafted can be expected to be widely implemented. For the patent
holder, DEP is probably more profitable, i.e. to wait for the
deployment to occur and then threaten to sue implementors because of
UPI.
In some jurisdictions, distributed DEP is possible, that is DEP and
finally lawsuits against resellers and end users, and not protocol
designers or software developers. In this situation, software
developers in turn face a very significant number of lawsuits from
their customers, forcing them to accept virtually any patent license
terms.[2]
Although the risks of DEP cannot be avoided entirely, one goal of a
W3C Patent Policy has to be to reduce the risk of DEP by its Members.
Therefore, the Draft has to be carefully checked if there are any
loopholes, substantial or not.
2 Editorial Issues
This section deals with mere editorial issues. Editorial issues can be
corrected by wording changes which do not alter meaning.
2.1 Improper Terminology
The Draft uses the abbreviation RAND for reasonable,
non-discriminatory as in RAND licensing terms. This seems to be
unfortunate because RAND is already a trademark. (The RAND Corporation
of America will certainly be annoyed by defamatory comments on ``RAND
licensing terms''.)
The Draft focuses on patents. However, in some jurisdictions there are
additional methods to protect inventions, comparable to patents in
scope and effect, but differing in some aspects (for example,
duration, or conflict resolution). Usually, these protection methods
are not included in the term patent.[3] It is not clear whether these
methods are covered by the Draft or not. (Copyright can have an effect
on implementations as well, but due to the nature of copyright, a
Working Group can notice such issues very early and always avoid
detrimental effects on implementors.)
3 Design Defects
This section deals with defects in the protocol defined in the Draft.
In this section, we assume that the reasonable, non-discriminatory
licensing terms licensing model is implemented--however, this should
not be taken as an expression in favor of reasonable,
non-discriminatory licensing terms. The discussion below is purely
academic.
3.1 The DEP Risk Is Underestimated
In section 1 of the Draft, patent issues are presented mainly from a
Member's point of view, and its Working Group activities:
The root of the challenge posed by patents in any standards arena
is that participants in a standards body will be unwilling and
unable to work collaboratively if, at the end of the process, the
jointly-developed standard can only be implemented by meeting
licensing terms that are unduly burdensome, unknown at the
beginning or even the end of the design process, or considered
unreasonable.
This seems to neglect that the W3C aims at standards for the entire
World Wide Web, and not only its members, and at standars for actual
implementation. The DEP threat should be mentioned explicitely. In the
worst case, not only the work of some Working Group members was
fruitless, or that of the entire Working Group, no, in the worst case,
the Recommendation is implemented widely before the patent
infringement claims are raised. It is extremly complicated and
time-consuming to replace already deployed client-side technology, and
distributed DEP can force a software developer to accept very
unfavorable licensing terms because fighting against the patent would
be even more cost-intensive.
3.2 The Definition of Essential Claims
There seems to be a defect in the defintion of an Essential Claim:
``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 [...]
The time limitation is confusing and unnecessary and complicates the
analysis of the patent disclosure protocol. It is plain wrong if the
first Public Working Draft cannot be considered prior art for the
patent or patent application in question (for example, because the
parts infringing the patent were added later).
Even if the Public Working Draft was published at a date at which it
could be considered prior art (given that the period of one year is
sufficient for that), it is not clear if the existance of the Public
Working Draft deters DEP or is a sufficient incentive to fight in
court, and in the case of distributive DEP, it is unlikely that this
is relevant at all.
A claim is automatically non-essential if a workaround exists:
Existence of a non-infringing alternative shall be judged based on
the state-of-the-art at the time the specification becomes a
Recommendation.
With the exception of a patented transmission format, it is hard to
believe that the possibility of a non-infringing implementation cannot
be shown in all cases, in particular since there is no requirement for
practicalness.
In addition, it should be up to the Working Group to decide if the
patent workarounds are acceptable, and even if non-patented
workarounds do exist, the obvious approach is probably patented. As a
result, the patent disclosure requirements are not as effective
against UPI as they could be.
Finally, note that ``the state-of-the-art at the time the
specification becomes a Recommendation'' might not be known at the
time at which patent disclosures are required.
In addition, the exceptions stated later seem to be too wide to be
effective to prevent DEP:
* enabling technologies that may be necessary to make or use any
product or portion thereof that complies with the Recommendation
but are not themselves expressly set forth in the Recommendation
(e.g., semiconductor manufacturing technology, compiler
technology, object-oriented technology, basic operating system
technology, and the like)[...]
* the implementation of technology developed elsewhere and merely
incorporated by reference in the body of the Recommendation.
There is no reason to exclude related patents which might affect the
implementability of the Recommendation from the disclosure
requirements, given that it is not unlikely that a Recommendation will
use certain concepts or technology which are already deployed or in
the process of being deployed. In addition, some companies claim that
``basic operating system technology'' includes fairly elaborated
concepts such as Web browsers, so such phrases should be used only
with greatest care.
A Working Group might consider such patents to be insignificant for
the actual Recommendation, but their disclosure should be mandated
nevertheless, to warn implementors and thus reducie the UPI risk.
3.3 Patent Licenses and Derived Recommendations
The reasonable, non-discriminatory licensing terms and royalty-free
licensing terms models both permit the following restriction:
[...]may be limited to implementations of the Recommendation, and
to what is required by the Recommendation[...]
This does not take revisions of the Recommendation and related or
derived Recommendations into account, resulting in DEP threats to the
work of future Working Groups.
3.4 Denial Of Service Attack
Patent holders can submit all their patents and patent applications
and state that they might contain Essential Claims. If a large number
of Essential Claims have to be considered, the protocol defined in the
Draft fails miserably, especially since most of the people dealing
with the patent disclosures do not have any expertise in dealing with
consequences of patent law in multiple jurisdictions.
As a side effect, a list of potentially essential patents published
along with drafts looses much of its value when it is so long that
considerable patent reviewing expertise is required to tell the good
one from the
3.5 Good Faith Is Not Always Enough
The Good Faith Disclosure Standards does not reflect the large number
of patents held by some companies engaging in W3C activities. In these
cases, lost or forgotten patents are not entirely unlikely. In
particular, the following provision seems to be counterproductive:
No extraordinary effort is required for patent disclosure
requests[...]
Patent portfolio reasearch at some W3C Members is an extraordinary
effort, and a Member can and will miss something essential if thorough
research is not done (if this is done deliberately or not does not
matter).
3.6 What is reasonable? Non-discriminatory?
It is not clear what ``reasonable, non-discriminatory licensing
terms'' mean in practice. In addition, a patent license in the
reasonable, non-discriminatory licensing terms spirit might change
suddenly, creating a DEP potential. Similar concers apply to the
royalty-free licensing terms requirements. The DEP prevention
therefore lies entirely in the disclosure of the patent (makeing the U
part in UPI less likely), and many ways to extort money from companies
which have already deployed W3C Recommendation implementations remain.
Certainly, a requirement for irrevocable license terms seems to be
desirable.[23]4
3.7 Contractual Implementability
It is not clear if the W3C Patent Policy Framework can be implemented
in contracts with their Members. Given the definitions of reasonable,
non-discriminatory licensing terms and royalty-free licensing terms,
there is probably a huge potential of loopholes. On the other hand,
some Members might not find the conditions favorable because they feel
that the new reasonable, non-discriminatory licensing terms are either
too permissive or too restrictive.
3.8 Patent Research
Acitve patent research does not seem to be covered by this policy. It
is a tool to prevent UPI and, therefore, DEP to some degree, but it is
costly even if it is limited to a few countries.
3.9 What About Free Software?
Clearly, patents pose a strong threat on Free Software. One of the
freedoms commonly associated with Free Software is the freedom to
distribute modified versions, and such a freedom is severly limited by
a requirement for royalties which can araise from the use of patented
technology.
The W3C should ask itself if it really wants to take steps to ban the
use of Free Software in major areas of the future World Wide Web (and
more generally, the Internet). Free Software has proven to be a viable
development model for providing the core technology infastructure of
the Internet. Even in areas directly related to W3C activities, the
importance of Free Softwareshould not be underestimated, at least when
looking at the server side.
Free Software always faces the threats of patents, but the tendency of
the Draft towards reasonable, non-discriminatory licensing terms puts
an unnecessary burden on Free Software. It might not be possible to
put reasonable, non-discriminatory licensing terms off the agenda of
the Patent Policy Working Group, but as a countermeasure, it should
examine if there is enough interest in a third licensing mode, with
the following characteristics:
* The Free Software license terms shall enable Free Software[5] to
implement the Recommendation (even partially and in different
context). No royalties shall be required for the use or
distribution of source code or object code. Note that these terms
are broader than those of the current royalty-free licensing terms
requirements.
* Patent licenses issued under these terms for Free Software shall
be irrevocable.
* For proprietary software, either royalty-free licensing terms or
reasonable, non-discriminatory licensing terms can apply.
If the force de frappe theory is correct, most patent holders will not
oppose such general licenses for Free Software because it is unlikely
that they have to face threats from this direction, and from a patent
policy point of view, there is no necessity for guaranteed mutual
annihilation after the first strike.
4 Summary
In our view, the Patent Policy Working Group has to take the following
steps before the Draft can be actually implemented:
* Correct all the critical defects mentioned above.
* In particular, the definition Essential Claims has to be fixed,
and a irrevocable component has to be added to the license models,
in order to reduce the UPI risks and the DEP threat.
* Consider dropping the questionable reasonable, non-discriminatory
licensing terms model, based on the strong arguments and
objections from the community at large.
* Implement a third licensing mode which favors Free Software if the
reasonable, non-discriminatory licensing terms model cannot be
dropped.
Copyright © 2001 by Florian Weimer. All rights reserved.
Permission is granted to make and distribute verbatim copies of this
document provided the copyright notice and this permission notice are
preserved on all copies.
_________________________________________________________________
Footnotes
...[1]
Some observers and even large-scale patent holders suggest that
part of the recent proliferation in software patents is due to
the UPI risk, and that patent collections are used as a force
de frappe, a long list of potential countering lawsuits.
...[2]
DEP has already occurred, but was usually attributed to
forgotten patents, but as of this writing, one case of planned
DEP is on trial. Mechanisms similar to distributed DEP have
already been used successfully against alleged trademark
infringement.
...patent.[3]
For example, in Germany, these additional methods are called
Geschmacksmuster and Gebrauchsmuster, in contrast to Patente.
... desirable.[4]
Adam Warner's submission contains a detailed analysis of the
DEP risks associated with the current reasonable,
non-discriminatory licensing terms procedures outlined in the
Draft.
... Software[5]
We do not give a definition of the term Free Software in this
context. Some work is probably required to obtain an accetable
definition, and there are a few open questions (for example,
regarding the status of proprietary derivatives of Free
Software). For an example of a more philosophical definition,
refer to http://www.gnu.org/philosophy/free-sw.html.
Received on Sunday, 30 September 2001 17:44:30 UTC