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There are certainly multiple varied interests in this discussion and they should have a seat at the table, the drafting table. Being able to discuss the value and fate of submitted proposals is more meaningful than submitting a proposal orally or in writing that others (on a Committee) can judge and dismiss if they wish, without interchange. Committees associated with standards should consider how balancing membership will contribute to credibility and buy-in.
That said, I wish to stir a different but related topic.
The IEEE Patent Committee Ad Hoc does not include a patent practitioner in any role (please correct me if I am wrong). People who have drafted patent applications and worked on transactions and cases as licensors and licensees, and who track recent litigation and events that affect patents (inside and outside of standards) would add a vital perspective.
By way of example, the “Innovatio” case involves an interpretation of the key IEEE Patent Policy term "Essential Claim." However, I do not recall any focus on this fundamental matter. As IEEE PatCom considers policy revisions, this salient point warrants attention that a practitioner should prompt.
The dearth of patent practice experience on the patent policy drafting committee is akin to lawyers drafting an IT standard with no technical people involved. A practitioner with a broader perspective could also help balance the work product of the Committee.
Similarly, a patent practitioner, familiar with recent cases and agency announcements, would know that some Ad Hoc proposed changes (on injunction, for example) take an extreme position that has been discredited and is not in sync with appellate court decisions at least in the U.S.
A practitioner would also recognize that requiring parties or courts to value every essential claim in a standard is impractical and standards-harming. The individual offering this notion would be asked, in Committee deliberations, to identify law cases or license negotiations that deploy such an unworkable and burdensome theory.
Where the same mantral litany of "patent issues to be considered" is repeated at least three times in several paragraphs in the Ad Hoc proposal, a practitioner might ask what value there is in this repetition and might look to avoid the appearance of a single group's agenda being advanced. Without getting into substance, a practitioner would question the inclusion of an 7-line sentence on this point replete with commas, colons, and semicolons.
A practitioner experienced in transactions would understand how the proposed language on patent transfers will discourage companies from participating in IEEE standards.
One ancillary item regarding the COMMENTS tool, which supplements comments of others. I appreciate that the use of a spreadsheet may facilitate Ad Hoc Committee review. However, for text comments, Excel is awkward and inapt for me. The limit of characters in a cell, the need to "wrap" text, the difficulty with cutting and pasting, the automatic insertion of characters into the text ("+E26" for example), and not knowing that “what I see may not be what I get”, and the lack of basic instructions on how to include text in a data format all make this a particularly unfriendly tool for me in an "open" process. In practice, using the tool, I entered an insert with three bullet points (i), (ii) and (iii) each in a separate spreadsheet cell. I noted that (ii) was indented (which could not be changed) but I submitted the spreadsheet anyhow. To the Committee's credit, they sent around a COMMENTS ID spreadsheet and asked if our comments were correct. My item (ii) was not in the COMMENTS ID spreadsheet. With limited Excel experience, I do not know if this was merely a typo or a byproduct of the format.
The challenge of the PatCom in addressing the numerous issues raised and the time and effort expended in finding the fair, sweet spot is certainly recognized. To improve the process and outcome, I would suggest opening the drafting committee (that might benefit from an infusion of new blood), including at least one “patent” person, and considering some way to facilitate comment submission.
Regards.
Marc Sandy Block,
Counsel, Intellectual Property Law
1B117 / North Castle Drive / Armonk, NY 10504
msb@xxxxxxxxxx
TL 251-4295 (outside 914-765-4295); fax 251-4290