Subject: Re: [Geopriv] Fwd: IPR Disclosure: Qualcomm Incorporated's Statement about IPR related to RFC

From: [email-masked] (Scott O. Bradner)
Date: Thu, 16 Jun 2011 11:37:03 -0400 (EDT)

Alan sed:
> it does not seem reasonable if IETF patent disclosure
> policy permits large companies to make technical contributions without
> disclosing related IPR in a timely manner 

the IETF IPR policy does not permit any company (large or small) to
make contributions without disclosing IPR

the policy requires prompt disclosure of IPR that is 
"reasonably and personally known to the contributor" to be dislosed
this specific language was chosen to deal with the case where a company
purposefully keeps somone from knowing about the IPR just so it
does not need to be disclosed - 

failure to meet the disclosure requirement is someting that is 
mostly (as John mentioned) enforced by the courts - companies
have lost the ability to enforce a patent because of such
failures (see
http://www.pcworld.com/article/135628/qualcomm_cant_enforce_patents_judge_rules.html
for an example.

Scott

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From: Alan Clark <[email-masked]>
Date: Thu, 16 Jun 2011 12:22:25 -0400

Scott

It is of course reassuring to note that the US Federal Court system and the
US FTC do take a strong stance with regard to the misuse of patents related
to standards.  This of course relates to the US, and may not affect the
enforceability of patents in other countries, hence having the SDO also play
a role would seem to make sense.

The term "reasonable" is always a problem term in legal agreements - unless
there is some qualification or at least examples of what is meant.
"Reasonable" in the filing cabinet era would have been limited by the
considerable cost and expense ploughing through documents whereas today most
companies have their patent information in electronic form and would be
easily able to search for possible matches with terms related to a standard
under development.  Perhaps the IETF patent policy could include some
suggestions on the interpretation of "reasonable" for example

"reasonably and personally known to the contributor, where the term
"reasonably" includes a duty to request that the contributor's company
conduct an electronic search for patents or applications filed by or on
behalf of the company that may be relevant to the contribution,"

Alan

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From: [email-masked] (Scott O. Bradner)
Date: Thu, 16 Jun 2011 13:05:58 -0400 (EDT)

> behalf of the company that may be relevant to the contribution,"

this has been discussed many times - for any company with a significant 
number of patents this would cost a very lot of money to do - the consensus
of the prior discussions ws that the likelyhood that companies would
just avoid the IETF if they needed to do a patent search everytime
one of their people was co-author on an ID (or worse yet, everytime 
any ID was published since IPR disclosures are requred when your
IPR shows up in someoen else's contribution) - thsi was previously
mentioned - I think by John - thus insisting on patent searches 
woudl be significantally counterproductive to teh production of
useful IETF technology

but as has also been mentioned = the right place for this discussion (if
you think teh rules need changing) is not the WG chairs list.

Scott