Subject: RE: Resolution: A suggested additional item in IPR disclosure pag es (fwd)

From: "Ling, Hung C (Hung)" <[email-masked]>
Date: Wed, 8 Dec 2004 21:09:18 -0500

Harald:

under RFC 3668 section 6.5, the license information requested is to select a choice:

   Specifically, it is helpful to indicate whether, upon approval by the IESG for
   publication as RFCs of the relevant IETF specification(s), all
   persons will be able to obtain the right to implement, use,
   distribute and exercise other rights with respect to an Implementing
   Technology a) under a royalty-free and otherwise reasonable and non-
   discriminatory license, or b) under a license that contains
   reasonable and non-discriminatory terms and conditions, including a
   reasonable royalty or other payment, or c) without the need to obtain
   a license from the IPR holder.

I believe section 6.4.3 (that you mentioned) deals with the disclosure requirement to provide information about specific IPR against specific technology under discussion in the IETF, not about specifc terms in a RAND license.  A number of people on this list have already commented on why it is not possible to provide specific terms.

Hung

-----Original Message-----
From: Harald Tveit Alvestrand [mailto:[email-masked]]
Sent: Wednesday, December 08, 2004 4:51 PM
To: Ling, Hung C (Hung); George T. Willingmyre; [email-masked]
Subject: RE: Resolution: A suggested additional item in IPR disclosure
pag es (fwd)

--On onsdag, desember 08, 2004 16:23:38 -0500 "Ling, Hung C (Hung)" 
<[email-masked]> wrote:

> Harald:
>
> Can you please clarify whether your intent on suggesting the added text
> is to "require" IPR holders who wish to offer a RAND license commitment
> to disclose specific RAND terms and conditions?  Sometimes, intention
> gets changed when massaging the words.
>
> If that is the intended or unintended outcome, I do not believe the
> change is workable for corporate law departments.  As George pointed out,
> that would also be a  change from RFC 3668 and 3905.

Hung,

the main intent is to make it possible for a reader of a generic disclosure 
to see whether or not a disclosure conforms to section 6.4.3 of RFC 3668 - 
that secton of RFC 3668 says that you have to disclose terms. Nothing new 
there.

Since we were adding machinery that talked about disclosing terms anyway, 
my thought was that we should make it simple to disclose terms in both 
forms, and to give readers assurance that all terms have been disclosed if 
that is the case.

For those who do not check the new checkbox, nothing is changed.

                       Harald

_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: "Lawrence Rosen" <[email-masked]>
Date: Wed, 8 Dec 2004 18:31:34 -0800

> I believe section 6.4.3 (that you mentioned) deals with the disclosure
> requirement to provide information about specific IPR against specific
> technology under discussion in the IETF, not about specifc terms in a RAND
> license.  A number of people on this list have already commented on why it
> is not possible to provide specific terms.

Not true. A number of people have already commented on why they don't want
to provide specific terms. But they are able to do so, and should be
required to do so.

/Larry

Lawrence Rosen 
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482 
707-485-1242 * fax: 707-485-1243 
email: [email-masked] 

> From: [email-masked] [mailto:[email-masked]] On Behalf
> Of Ling, Hung C (Hung)
> Sent: Wednesday, December 08, 2004 6:09 PM
> To: Harald Tveit Alvestrand; Ling, Hung C (Hung); [email-masked]
> pages (fwd)
> I believe section 6.4.3 (that you mentioned) deals with the disclosure
> requirement to provide information about specific IPR against specific
> technology under discussion in the IETF, not about specifc terms in a RAND
> license.  A number of people on this list have already commented on why it
> is not possible to provide specific terms.
> 
> Hung
> 
>

---

From: "Larry J. Blunk" <[email-masked]>
Date: Thu, 9 Dec 2004 01:06:18 -0500 (EST)

> I believe section 6.4.3 (that you mentioned) deals with the disclosure requirement to provide information about specific IPR against specific technology under discussion in the IETF, not about spec…

    Hung,
      Harald did not advocate this, I did.  Harald's proposal adds
a new option to the license disclosure form to allow the disclosure
of specific license terms and conditions.  It does not require the
specification of terms and conditions when choosing one of the RAND
options in the disclosure form.

      Thanks for your feedback.  Coming from a small company,
a simple promise of RAND licensing does not really give me warm-fuzzies.  
A large company will likely be able to negotiate terms should a
RAND license turn out to be not so "reasonable".  An individual or small
company with limited legal resources will likely be stuck with a "take it
or leave it" response should they have problems with the terms.
But I can see my proposal is going nowhere, so I will now put my
support behind Harald's proposal.

    -Larry Blunk

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Thu, 09 Dec 2004 10:59:20 +0100

--On onsdag, desember 08, 2004 21:09:18 -0500 "Ling, Hung C (Hung)" 
<[email-masked]> wrote:

> arald:
>    Specifically, it is helpful to indicate whether, upon approval by the
> IESG for    publication as RFCs of the relevant IETF specification(s), all
> technology under discussion in the IETF, not about specifc terms in a
> RAND license.  A number of people on this list have already commented on
> why it is not possible to provide specific terms.

Hung,

many people have pointed out many situations in which it is not possible to 
provide specific terms. These people will not check the box.

Section 6.4.3 requires you to provide specific terms. Those people who 
cannot disclose specific terms (for whatever reason) will not be able to 
use the provision in 6.4.3 that allows them to not file specific IPR claims.

I still don't see the problem.

                Harlad

---

From: "George T. Willingmyre" <[email-masked]>
Date: Thu, 9 Dec 2004 09:34:41 -0500

Harald's December 8 reply to Hung (which I copy below since it was not
included in this last email)  reassures me in the sense he says that his
main intention  is to see whether a disclosure meets the requirements of
6.4.3.

> For those who do not check the new checkbox, nothing is changed.

Here is the subject paragraph

6.4.3.  The requirement for an IPR disclosure is not satisfied by the
   submission of a blanket statement of possible IPR on every
   Contribution.  This is the case because the aim of the disclosure
   requirement is to provide information about specific IPR against
   specific technology under discussion in the IETF.  The requirement is
   also not satisfied by a blanket statement of willingness to license
   all potential IPR under fair and non-discriminatory terms for the
   same reason.  However, the requirement for an IPR disclosure is
   satisfied by a blanket statement of the IPR discloser's willingness
   to license all of its potential IPR meeting the requirements of
   Section 6.6 (and either Section 6.1.1 or 6.1.2) to implementers of an
   IETF specification on a royalty-free basis as long as any other terms
   and conditions are disclosed in the IPR disclosure statement.

I still have reservations though about Harald's second paragraph reply

> forms, and to give readers assurance that all terms have been disclosed if

Depending on how the check box appears on the actual patent disclosure
templates, It may give an impression that T &Cs are "expected" if not even
"required" for RAND commitments.

In this regard I agree with Robert  Barr's suggestion we have a look at the
proposed new templates before they are put to use.  In my opinion it will be
important to help a user understand that in one case of checking the
proposed new box he/she is meeting the requirement in 6.4.3. and in another
case of checking the proposed new box he/she is making a completely
voluntary discloser that is beyond what the procedure requires

From: "Robert Barr" <[email-masked]>
To: "'Harald Tveit Alvestrand'" <[email-masked]>; "'Scott W Brim'"
<[email-masked]>
Cc: <[email-masked]>; <[email-masked]>
Sent: Wednesday, December 08, 2004 11:57 AM
Subject: RE: Resolution: A suggested additional item in IPR disclosure
pages(fwd)

> I'd like to see the form as it will look w this proposed change. It should
> be consistent w 3668.

George T. Willingmyre, P.E.
GTW Associates
1012 Parrs Ridge Drive
Spencerville, MD 20868
301 421 4138 facsimile 301 421 0977
www.gtwassociates.com

----- Original Message ----- 
From: "Harald Tveit Alvestrand" <[email-masked]>
To: "Ling, Hung C (Hung)" <[email-masked]>; <[email-masked]>
Sent: Thursday, December 09, 2004 4:59 AM
Subject: RE: Resolution: A suggested additional item in IPR disclosure pag
es (fwd)