Hi Don,
I do not believe IEEE needs to adopt a policy
with this level of detail. I don’t think PatCom needs to, nor should it,
define what terms may or may not be included in a RAND (royalty bearing or otherwise)
license. Flexibility of terms allows flexibility of licensing models. I believe
that should be encouraged, especially if IEEE is heading in the direction of increased
disclosure of rates and terms.
Further, I understand that the W3C’s
policies have caused some companies to decline to participate in that organization’s
activities, and I don’t think they are a great model for IEEE.
I believe the discussion of reciprocity arose
with respect to the “will never assert essential claims” checkbox.
Although I expect that check box will prove ineffective, and I will be very surprised
if any commercial entity ever checks it, and I have in this forum proposed deleting
it, I can certainly live with it in the form LOA. I was simply trying to streamline
away a section of the LOA that I believe adds little or no value.
Thanks.
-Mike
From: Don Wright
[mailto:don@LEXMARK.COM]
Sent: Monday, March 20, 2006 11:28
AM
To: PP-DIALOG@listserv.ieee.org
Subject: 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?
***************************************************************************
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
***************************************************************************