It seems to me that
the term “Essential Patent Claims” is relevant to both disclosure and
licensing contexts, and we simply need more precise drafting to address both
issues.
With respect to
disclosure, I agree that companies will rarely be able to state for sure that
a patent is essential. I also agree that IEEE should encourage early
disclosure of patents in order to better facilitate informed technology
choices, to encourage earlier notice and, to the extent necessary,
negotiations. Therefore I agree that disclosure should not be limited
only to patents definitively known to be essential (else I imagine very few
disclosures will be made). To the extent the phrase “may be essential”
facilitates disclosure of a larger or wider group of patents, I have no
objection, and I agree IEEE should retain it.
However, as noted
previously, with respect to licensing, there is no obligation to license
claims that “may be” essential. There is only an obligation to license
claims that in fact are essential. I think we need to separate the
principles of disclosure and licensing, and not add vague and confusing
elements to the definition of Essential Patent Claims.
This can easily be
accomplished with slightly different drafting. The license assurance
should be limited to only those Essential Patent Claims that are essential.
Disclosure may be broader.
I propose that the
definition of Essential Patent Claims include only those claims that are
essential, but any disclosure clause in the bylaws or LOA should encourage
each company to disclose patents that it believes may contain Essential Patent
Claims.
-mike
From: Taffet,
Richard S. [mailto:richard.taffet@bingham.com]
Sent: Tuesday, February 21, 2006 10:45
AM
To: Sirtori, Michael J;
PP-DIALOG@LISTSERV.IEEE.ORG
Subject: RE: [PP-DIALOG] LOA: Essential
Patent Claims
In the context of
disclosing patents, it is typically appropriate to include the phraseology of
"may be essential" in order to encourage the early disclosure of
patents. Prior to final approval of a standard it may not be possible
for a patent owner to definitively say what is or is not "essential," but if
patents are disclosed that "may" be relevant, then implementers have notice of
potentially essential patents and implementers and patent owners can
start negotiating licenses early on. Although there are risks
attendant to agreeing to licenses before a standard is final, those risks can
be reflected in the greater than reasonable terms that can be agreed to at
that time.
Richard S. Taffet,
Esq.
Bingham McCutchen
LLP
399 Park Avenue
New
York, New York
10022-4689
T: (212) 705-7729
F: (212) 702-3603
email:
richard.taffet@bingham.com
cell: (914) 582-2477
-----Original
Message-----
From: Sirtori,
Michael J [mailto:michael.j.sirtori@INTEL.COM]
Sent: Tuesday, February 21, 2006 11:33
AM
To:
PP-DIALOG@LISTSERV.IEEE.ORG
Subject: [PP-DIALOG] LOA: Essential
Patent Claims
Hi Don and
Claire,
I propose that the PatCom
consider a minor revision to the definition of Essential Patent
Claims. The current proposed definition uses an unnecessarily vague
and broad phrase, “… the use of which may be essential to create a compliant
implementation…” It seems to me that the phrase “may be essential” is
not sufficiently narrow, and has potential to lead to confusion and/or
mischief. This problem can be solved if we replace “may be” with “is”
as follows:
For this purpose, an Essential Patent Claim shall
include any patent claim (including new claims based on a reissue or a
re-exam) and/or patent application claim (including continuations or
divisionals [TBD (not
continuations in part)]), the
use of which is
essential to create a compliant implementation of either mandatory or
optional portions of the [Proposed] IEEE
Standard.
This should help prevent
confusion about what claims are required to be licensed.
Thanks.
Regards,
Mike
Sirtori