RE: [PP-DIALOG] Reciprocity clause needed
In the course of our discussion on reciprocity, some have suggested addressing this issue in the policy. Others have suggested it is a slippery slope and to be avoided. Yet others have suggested that the attachment of sample licenses would sufficiently disclose the terms and conditions typical for a license from that potential licensor. For full consideration, I offer a significantly modified version of the W3C description of a patent license (see http://www.w3.org/Consortium/Patent-Policy/ for the full W3C Patent Policy). The IEEE's license is not a mandatory royalty-free license as is the W3C's but this text does a reasonable job of describing what is required and what is allowed.
For your contemplation....
With respect to a IEEE Standard developed under this policy, a patent license shall mean a non-assignable, non-sublicensable license to make, have made, use, sell, have sold, offer to sell, import, and distribute and dispose of implementations of the Standard that:
1. shall be available to all, worldwide, regardless of membership or affiliation with the IEEE;
2. shall extend to Essential Patent Claims, committed in a Letter of Assurance, that are owned or controlled by the licensor;
3. may be limited to implementations of the Standard, and to the mandatory and optional portions of the Standard;
4. may be conditioned on a grant of a reciprocal license to all Essential Claims owned or controlled by the licensee for the same IEEE Standard. A reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all.
5. may be suspended with respect to any licensee when licensor is sued by licensee for infringement of claims essential to implement any IEEE Standard.
6. may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee (beyond what is contained in this patent policy), but may include reasonable, customary terms relating to the operation or maintenance of the license relationship such as the following: choice of law and dispute resolution;
7. shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the license as offered by the licensor.
Do we want to go this far?
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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
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