RE: [PP-DIALOG] Reciprocity clause needed

[don@xxxxxxxxxxx]

Mike:
 
My understanding of the major problem some W3C members had was that the licensing was mandatory and had to be royalty-free.  Those parts were not included in this since we do not have mandatory licensing and we allow RAND rates, terms and conditions.

I'm not a great fan of trying to define everything that is OK and everything that is not but some people seem to be.  I thought this might give us a starting point if we wanted to go there.

***************************************************************************
 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
***************************************************************************

"Sirtori, Michael J" <michael.j.sirtori@intel.com> 03/20/2006 03:10 PM

To:        <don@LEXMARK.COM>, <PP-DIALOG@listserv.ieee.org>         cc:                 Subject:        RE: [PP-DIALOG] Reciprocity clause needed

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 
***************************************************************************