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>What if a patent holder cannot disclose the patent claim at the time the LOA is made?
>IEEE should not be able to compel disclosure of confidential details of patent applications
>that have not been published.
The IEEE is not asking for disclosure of unpublished patent applications. A patent holder may chose to include their unpublished patent applications by providing a blanket assurance or it may remain silent. If that patent eventually issues and it contains essential claims, we would like an LOA to be provided if it isn't already covered by a blanket.
>Also, maybe there need to be separate LOAs, one for a general statement and one
>for a specific statement.
Separate LOAs may be provided and all are irrevocable. For example, if you provide a blanket LOA and offer RAND terms, you may provide a subsequent LOA for a specific patent claim and offer royalty-free terms. The licensee may choose which LOA to seek a license under. All else being equal, I suspect most will seek a royalty-free license.
***************************************************************************
Don Wright don@lexmark.com
f.wright@ieee.org / f.wright@computer.org
Director of Standards
Lexmark International Past Chair, IEEE SA Standards Board
740 New Circle Rd Chair, Patent Committee IEEE SASB
Lexington, Ky 40550 Member-at-large, IEEE CS SAB
859-825-4808 (phone) Member, IEEE-ISTO Board of Directors
603-963-8352 (fax) Member, W3C Advisory Committee
***************************************************************************
| "Michelle Lee" <mleelaw@nortel.com>
Sent by: PP-DIALOG@ieee.org 03/18/2006 01:25 AM
|
To: <PP-DIALOG@listserv.ieee.org> cc: Subject: RE: [PP-DIALOG] An LOA draft: clarification on blanket letter of assurance |
What if a patent holder cannot disclose the patent claim at the time the LOA is made? IEEE should not be able to compel disclosure of confidential details of patent applications that have not been published.
Also, maybe there need to be separate LOAs, one for a general statement and one for a specific statement.
Thanks,
Michelle
-----Original Message-----
From: Wright, Don don@lexmark.com
Sent: Tuesday, March 07, 2006 4:06 PM
To: Ling, Hung C (Hung); PP-DIALOG@LISTSERV.IEEE.ORG
Subject: RE: [PP-DIALOG] An LOA draft: clarification on blanket letter of assurance
Hung:
I believe the case you suggest is the reason the "This is a blanket LOA" box was added. Only by explicitly checking the box should the LOA be interpreted as a "blanket LOA" otherwise it is only for what is explicitly listed. This prevents an accidental and unintended commitment.
If, for example, a patent holder checks the RAND box but fails to list a patent claim and fails to check the "Blanket" box, we should probably return it to them asking them to either provide a patent claim or check the blanket box.
***************************************************************************
Don Wright don@lexmark.com
f.wright@ieee.org / f.wright@computer.org
Director of Standards
Lexmark International Past Chair, IEEE SA Standards Board
740 New Circle Rd Chair, Patent Committee IEEE SASB
Lexington, Ky 40550 Member-at-large, IEEE CS SAB
859-825-4808 (phone) Member, IEEE-ISTO Board of Directors
603-963-8352 (fax) Member, W3C Advisory Committee
***************************************************************************
"Ling, Hung C (Hung)" <hling@lucent.com>
Sent by: PP-DIALOG@ieee.org
03/09/2006 09:47 PM
To: "Topp, Claire" <Topp.Claire@dorsey.com>, "Ling, Hung C (Hung)" <hling@lucent.com>, PP-DIALOG@listserv.ieee.org
cc:
Subject: RE: [PP-DIALOG] An LOA draft: clarification on blanket letter of assurance
Claire:
Thanks very much for your response.
It seems to me that section 2 allows a patent holder to check off an appropriate box of either A, B, C or D, with specific wording that says
"Nothing in this Letter of Assurance shall be interpreted as giving rise to a duty to conduct a patent search. The Patent Holder may, but is not required to, identify one or more of its Essential Patent Claims below. "
A large Patent Holder cannot afford to perform patent searches (since there are so many SDO and so many standards), and without listing specific essential claims (unless its representatives are personally aware), I would think then its LoA constitutes a blanket assurance of its Essential Patent Claims on the specific standard.
Since I am an engineer, I will let the lawyers on the list to comment on committing a patent holder to "future patents" in a LoA form.
Hung Ling
-----Original Message-----
From: Topp, Claire [mailto:Topp.Claire@dorsey.com]
Sent: Tuesday, March 07, 2006 4:06 PM
To: Ling, Hung C (Hung); PP-DIALOG@LISTSERV.IEEE.ORG
Subject: RE: [PP-DIALOG] An LOA draft: clarification on blanket letter of assurance
You are correct that the blanket assurance applies only to the specific standard named in the LoA. However, the Blanket Assurance is intended to cover ALL Essential Patent Claims that the Patent Holder may currently or in the future hold or control or otherwise have the right to license. If you do not check the Blanket Assurance, the assurance only covers the Essential Patent Claims identified on the form and not ALL claims that you may currently or in the future hold.
Does that help clarify?
Claire
Claire H. Topp, Esq.
Outside Legal Counsel IEEE-SA
Dorsey & Whitney LLP
50 South Sixth Street
Minneapolis, Minnesota 55402
(612)343-8278 (phone)
(612)340-2868 (facsimile)
topp.claire@dorsey.com
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-----Original Message-----
From: Ling, Hung C (Hung) [mailto:hling@LUCENT.COM]
Sent: Tuesday, March 07, 2006 1:57 PM
To: PP-DIALOG@LISTSERV.IEEE.ORG
Subject: Re: [PP-DIALOG] An LOA draft: clarification on blanket letter of assurance
In this draft, there is a box that says "When checked, this is a Blanket Letter of Assurance." I understood the intent for such a blanket assurance to apply only to that specific standard named in the LoA. In that case, how is it different from a Patent Holder checking off a box under 2? It seems to be redundant to me to have that extra box.
Hung Ling