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I agree with Mike on all accounts about proposal #2 (Section D). By rearranging to have patent holder choose Box 1 or Box 2, the LOA is not just a letter of assurance and confuses disclosure and licensing positions. Box 1 is unnecessary:
(1) It seems rarely used, and I suspect likely by individuals or companies with no or few patents.
(2) No company with a number of patents would advise to check this box as its statement with legal effect. Whatever definition of knowledge, this type of LOA choice necessitates unreasonable searches for every standard to comply and without any comfort or confidence in making it as an "assurance". IEEE should not put patent holder participants in this position, which burdens some companies a lot more than others. I understood the LOA form is not to force choice upon a patent holder, but seek information so IEEE can know if a patent holder refuses to license its essential IPR and facilitate the collection of patent holder statements that declare their licensing position.
(3) I don't see how Box 1 declaration of unawareness at the time of making it helps the development of IEEE standards any. That does not guarantee there will be no IPR known at a later date or the declarant will be willing to then offer a license.
Thanks,
Michelle
-----Original Message-----
From: From: "Sirtori, Michael J"
Sent: Date: Tue, 14 Mar 2006 19:41:22
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Reciprocity clause needed
Don,
While I am at it, may I raise a conceptual question about the “not aware of any essential patent claims” response in Section D “Assurances”?
I think it is simpler and more realistic to move the “not aware” option out of this section. What benefit is it to IEEE or the specification developers or implementers if a respondent checks this box? To allow a respondent to say, even in perfectly good faith, “We don’t know if we have any patents” only begs the question: “What if you do?”
Unless we can get a respondent to say something like “Without a doubt, we are absolutely sure that we do not have any Essential Patent Claims” (in which case, that is what the box should say; but then in that case, we are much less likely to ever get anyone to check it), what we really need them to say is “To the extent that Patent Holder owns or controls Essential Patent Claims, its licensing position is [select one]: …”.
Any definition of Organizational Knowledge, or other carefully crafted and detailed knowledge qualifier about who knows what and when, is really outside the scope of an “Assurances” section. The real issue for that section is how will that party license essential patent claims that it does own.
If we want to retain a check box to allow a respondent to state they are “not aware of essential patent claims”, perhaps it ahould be in addition to, rather than in place of, an assurance response. Disclosure of essential patent claims, whether mandatory or voluntary, when it should occur, whether or not there should be any qualifications or limitations on knowledge, etc., are all important and interesting issues for the PatCom to consider. But it seems to me those issues should be addressed in a different section of the LOA.
Thanks for the chance to comment.
-Mike