Subject: Nit in draft-bradner: "Foreign" patents.

From: Harald Alvestrand <[email-masked]>
Date: Tue, 19 Feb 2013 11:20:42 +0100

Just a nit, while it is still easy to fix:

I'm happy that the only place "US" occurs in this document is in the 
appendix detailing stuff removed.
There's one remaining internationalization issue visible on a quick scan:

    B. If an IPR holder files foreign counterpart patent applications,
       the claims of which are substantially identical to the claims of a
       patent or patent application previously disclosed in an IPR
       disclosure, the IPR holder is not required to make a new or
       updated IPR disclosure as a result of filing such foreign
       counterpart applications or the issuance of foreign patents on
       such applications.

I believe this should be accompanied by a term definition in section 1 
(or here) saying that "foreign counterpart patent" means a patent that 
has no additional claims over the initial patent, and is filed in a 
different jurisdiction. (It may contain fewer claims than the original).

While most patents that we've had trouble with seem to start from an US 
filing, it's inappropriate to write this document as if that will always 
be the case.

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From: Jorge Contreras <[email-masked]>
Date: Tue, 19 Feb 2013 05:55:26 -0500

Harald - the sensitivity about "foreign" is understood. But your language may be too limiting in ways that could cause problems. For example, claims may not be identical in every country. Depending on local translations and rules, it's possible that there could be mismatches, and your language might exclude those, which would be nobody's intention.  Instead, how about substituting "patents filed in additional countries" for "foreign patents"?

Jorge

Sent from my iPhone

On Feb 19, 2013, at 5:20 AM, Harald Alvestrand <[email-masked]> wrote:

> I'm happy that the only place "US" occurs in this document is in the appendix detailing stuff removed.
> I believe this should be accompanied by a term definition in section 1 (or here) saying that "foreign counterpart patent" means a patent that has no additional claims over the initial patent, and is filed in a different jurisdiction. (It may contain fewer claims than the original).
> 
> While most patents that we've had trouble with seem to start from an US filing, it's inappropriate to write this document as if that will always be the case.
> 
> _______________________________________________
> Ipr-wg mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/ipr-wg

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From: Harald Alvestrand <[email-masked]>
Date: Tue, 19 Feb 2013 12:06:45 +0100

> Harald - the sensitivity about "foreign" is understood. But your language may be too limiting in ways that could cause problems. For example, claims may not be identical in every country. Depending…

That's my worry about the word "counterpart", since this language occurs 
in the context of saying that "foreign counterpart" applications do not 
require new IPR disclosures.

If a new filing broadens the claims in a way that impacts the IETF 
standards process, I would think that a new IPR disclosure should 
certainly be required.

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From: Jorge Contreras <[email-masked]>
Date: Tue, 19 Feb 2013 06:13:19 -0500

On Feb 19, 2013, at 6:06 AM, Harald Alvestrand <[email-masked]> wrote:

> That's my worry about the word "counterpart", since this language occurs in the context of saying that "foreign counterpart" applications do not require new IPR disclosures.
> 
> If a new filing broadens the claims in a way that impacts the IETF standards process, I would think that a new IPR disclosure should certainly be required.

That would be a difficult burden for company counsel to meet. I'd like to hear from others before making a change that would result in that much additional work, review and risk for participants.  I'm not aware of any other SDO that places the disclosure burden so high.

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From: Ted Hardie <[email-masked]>
Date: Tue, 19 Feb 2013 08:50:51 -0800

> That would be a difficult burden for company counsel to meet. I'd like to hear from others before making a change that would result in that much additional work, review and risk for participants.…

I'm not sure which company counsel you mean.  If the company filing
the initial IPR statement file the IPR in additional jurisdictions, it
would then update with the new jurisdictions as needed.  That seems
like book-keeping, but not terribly hard.  But your statement on
review seems to point to the counsel for those companies reviewing the
patent.  Are you concerned that having to review the claims in each
jurisdiction will create a lot of work for the counsel of those
considering implementing that standard?  That may well be true, but if
the granted claims are different, I'm not sure how it is avoidable.
If I'm building a box for sale on the theory that the claims in
jurisdiction 1 are all that apply and jurisdiction 2 grants much more,
my situation is very different, no?

regards,

Ted Hardie

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From: tglassey <[email-masked]>
Date: Tue, 19 Feb 2013 09:44:57 -0800

On 2/19/2013 3:06 AM, Harald Alvestrand wrote:
>> Harald - the sensitivity about "foreign" is understood. But your 
>> language may be too limiting in ways that could cause problems. For 
>> example, claims may not be identical in every country. Depending on 
>> local translations and rules, it's possible that there could be 
>> mismatches, and your language might exclude those, which would be 
>> nobody's intention.  Instead, how about substituting "patents filed 
>> in additional countries" for "foreign patents"?
>
> That's my worry about the word "counterpart", since this language 
> occurs in the context of saying that "foreign counterpart" 
> applications do not require new IPR disclosures.
>
Not a new filing but an amendment of any already on file. The idea that 
each new filing is un-connected creates another problem Harald...

Todd

>>> I believe this should be accompanied by a term definition in section 
>>> 1 (or here) saying that "foreign counterpart patent" means a patent 
>>> that has no additional claims over the initial patent, and is filed 
>>> in a different jurisdiction. (It may contain fewer claims than the 
>>> original).
>>>
>>> While most patents that we've had trouble with seem to start from an 
>>> US filing, it's inappropriate to write this document as if that will 
>>> always be the case.
>>>

-- 
Regards TSG
"Ex-Cruce-Leo"

//Confidential Mailing - Please destroy this if you are not the intended recipient.

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From: tglassey <[email-masked]>
Date: Tue, 19 Feb 2013 09:46:42 -0800

On 2/19/2013 8:50 AM, Ted Hardie wrote:
> I'm not sure which company counsel you mean.
In the case of IPR issues - it means all of the participants controlling 
Sponsor's GC's

Todd

>   If the company filing

-- 
Regards TSG
"Ex-Cruce-Leo"

---

From: tglassey <[email-masked]>
Date: Tue, 19 Feb 2013 10:05:21 -0800

> That would be a difficult burden for company counsel to meet. I'd like to hear from others before making a change that would result in that much additional work, review and risk for participants.…
With the disclosure and assignment issues this case precedent creates 
Jorge - you dont have a choice anymore.

http://ipspotlight.com/2011/01/03/court-agreement-to-assign-a-patent-is-not-by-itself-actual-assignment/

No other SDO has to do these types of things because they all have 
formal memberships who's actions are controlled through a formal 
membership contract and agreement. Through that a process including 
probably an Arbitration Control is placed on all members and so its not 
an issue.

The IETF has refused to acknowledge that it is identical to these other 
orgs and has to deal with proper disclosure by the participants in the 
process so all parties are fully informed from Day-1

Sorry - its just about being open and transparent - for real...

-- 
Regards TSG
"Ex-Cruce-Leo"

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From: Harald Alvestrand <[email-masked]>
Date: Tue, 19 Feb 2013 23:50:09 +0100

> That would be a difficult burden for company counsel to meet. I'd like to hear from others before making a change that would result in that much additional work, review and risk for participants.…
The runaround I'm thinking of is where company X discloses a filing in 
country A with claim Foo, and also does a filing in country B with 
claims Foo and Bar, where Bar goes well beyond Foo.

If it then discloses the filing in country A (Foo only) to the IETF, it 
can claim that it has fulfilled its obligations, even though the fact 
that it's also filed a claim for Bar may also be material.

It's the typical scenario that engineers would come up with - a judge 
might just say "this is clearly done in bad faith" and conclude that the 
filer was a troll anyway.

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From: Stephan Wenger <[email-masked]>
Date: Tue, 19 Feb 2013 23:34:15 +0000

Hi Harald,

On 2.19.2013 14:50 , "Harald Alvestrand" <[email-masked]> wrote:

>>>>nobody's intention.  Instead, how about substituting "patents filed in
>>>>additional countries" for "foreign patents"?
>>>occurs in the context of saying that "foreign counterpart" applications
>>>do not require new IPR disclosures.
>>>
>> That would be a difficult burden for company counsel to meet. I'd like
>>to hear from others before making a change that would result in that
>>much additional work, review and risk for participants.  I'm not aware
>>of any other SDO that places the disclosure burden so high.

One can do what you describe in a single legislation as well (by filing a
continuation or divisional), as long as you have one non-allowed
application in the same family.  Also, note that most IETF declarations
cover patent applications, where you can tinker with the claims until
allowance (or even later, see above).  Fine tuning claims to match a
standard's language is done all the time using either mechanism, and not
out of malicious intend; it's bread and butter of portfolio management.
That is why, for a good long term risk analysis, one needs to read the
patent specification, and not (only) the claims.

>filer was a troll anyway.

Yes.

Beyond that:
The vast majority of the IETF disclosures, presumably intentionally and
certainly voluntarily, make venue or continuation gaming impossible, by
either declaring terms against any claim in the discloser's portfolio that
reads on an I-D or RFC (like Cisco declarations commonly do), or by using
mechanisms such as listing the countries in which international
counterparts have been filed (like Nokia declarations commonly do), or by
specifically referring to patent families.

My feeling is that you attempt to solve a non-issue with a sledgehammer
method--and missing said non-issue at least partly.

Stephan