Subject: RE: BCP79 Drafting Notes #10

From: "Lawrence Rosen" <[email-masked]>
Date: Mon, 21 Jan 2013 10:24:01 -0800

I gather the concern about "participants" in this thread is really about
BCP79 Drafting Note #10: 

     "Lurkers -- this is a complicated issue that runs throughout the 
     document.  At a high level, I have suggested that lurkers ARE 
     required to make IPR disclosures, to avoid a Rambus situation.  
     I understand that this may be controversial."

Will we destroy the IETF culture of openness and inventiveness by
legislating the behavior of lurkers? I don't believe a draconian policy
toward lurkers is necessary or sufficient to protect IETF from patents. 

I understand the reference to the "Rambus situation" but the problem is
overstated. The Rambus case(s), in effect, made it the responsibility of
SDOs to state their IP rules precisely so that participants have clear
notice of IP ownership. Beyond that, I don't believe the court required that
we must change our culture in order to become a secrecy-bound membership
organization in which "lurkers" are prohibited from participating without
signing some pledge. We're free to define our own way toward patent
protection.

As far as I know, secrecy is the traditional, legally effective way to
protect our inventions against lurkers learning from us and patenting our
standards ahead of us. That is the purpose of trade secret laws. But new
secrecy rules in IETF will be far more controversial than lurking ever is in
an Internet-based technical culture.

There is another way: IETF openness is itself a defense to a Rambus
situation. Inventions are subject to any prior art that is disclosed here at
IETF and elsewhere before the date of a claimed invention. Recent US court
decisions relating to patentable subject matter, novelty, and
non-obviousness also mean that not every improvement on prior art made by
"lurkers" will be patentable. Therefore, the earlier we disclose our own
prior inventions and the more complete our IETF drafts -- the more we turn
each step of our specification-drafting process into an open publication of
our inventions -- the greater our defense against later patent claimants.

Furthermore, there are other steps we can take to provide reassurance that
*active participants* in IETF activities commit their own necessary patented
or patentable claims for our use in IETF specifications. This would require
us to adopt an IETF Contributor Agreement that grants patent rights relating
to actual Contributions. That noun can be more easily defined than the verb
"participate." A Contributor Agreement can also precisely clarify when
people are contributing for themselves or on behalf of their employers.

We need a Contributor Agreement more than we need disclosure rules for
lurkers on our  public email lists and public draft directories.

/Larry 

Lawrence Rosen
Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com)
3001 King Ranch Rd., Ukiah, CA 95482
Office: 707-485-1242