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Gil and patcom dialog list
Seems to me that while the question before us is the IEEE instance, the
high level question is a generic one ... and it could be that other SDOs have
thought about it and addressed what happens when their patent
policies evolve.
Would be helpful to know what others have done in this regard in case it
may be instructive
see everyone Friday in Piscataway!
George T.
Willingmyre
President GTW Associates From: Gil Ohana (gilohana)
Sent: Wednesday, November 25, 2015 3:48 PM
Subject: Re: [PP-DIALOG] Discussion of Application of Updated
By-Laws to Work in Process David and David,
I wanted to follow up on my suggestion below regarding how the IEEE-SA might
address the question of what version of the By-Laws applies to work in
process at the IEEE-SA. Since my October 14 posting to PP-Dialog, the
IEEE-SA has proposed a new draft FAQ and response, FAQ 84A, which bears on the
issue I raised. Draft FAQ 84A provides as follows: 84A. Is an Accepted LOA
that was accepted before the effective date of the updated IEEE-SA Patent Policy
interpreted under the updated patent policy or under the patent policy that was
in effect on the date of acceptance? An Accepted LOA is subject to the IEEE-SA patent policy
in effect at the time of IEEE’s acceptance of that LOA. The March 2015 patent
policy update does not amend retroactively the terms of any previously Accepted
LOA. In updating its patent policy, the IEEE-SA expresses no view as to whether
any specific provision in the March 2015 update does, or does not, represent a
substantive change from the pre-March 2015 IEEE-SA patent
policy. I very much appreciate PatCom’s
effort to address the question of the applicability of the updated patent policy
to Essential Patent Claim that is within the scope of an Accepted LOA accepted
prior to March 15, 2015. I am concerned, however, that the position taken
in draft FAQ 84A will not prove a good foundation for future standards
development at IEEE-SA. Specifically, the position that an LOA accepted at
a point in time is subject to the patent policy in effect at that point in
time would “grandfather” old LOAs (and the submitters of old LOAs, or the
companies that come to own those submitters). This creates a situation in
which different participants in IEEE-SA standards development that submitted
LOAs of different scopes at different times will be subject to different patent
policy texts. While the text of FAQ 84A
(wisely) leaves open the question of whether the 2015 updates represent a
substantive change relative to the previous patent policy, I am conscious of the
fact that one company has resurrected an earlier LoA issued by a corporate
affiliate to try to bring itself under the previous policy. That suggests
to me that the submitting company believes that the 2015 updates are a
change. While other participants in IEEE-SA standards development may
disagree with that position, all participants in IEEE-SA standards development
benefit when participants are governed by the same policy text rather than by
different texts that they may understand differently. The draft FAQ 84A,
in its current form, will perpetuate, in principle forever, a situation in
which different participants operate under different policy texts, to the
detriment of standards development at IEEE-SA. Therefore, I propose that the
Patent Committee consider carefully whether it wants to release draft FAQ 84A in
its current form, or whether there are alternatives that would serve the goals
of a uniform policy text that governs all participants in IEEE-SA standards
development at a point in time. I look forward to discussing this issue
under agenda item 6.3 at the December 4 Patent Committee meeting. Happy Thanksgiving to those in
the United States. Best regards, Gil Ohana (employed by and affiliated with Cisco
Systems) From: Gil Ohana
(gilohana) To: David Law, Chair, Patent Committee; David Ringle, IEEE-SA
Patent Administrator David and David,
I am writing to ask that at its December meeting the Patent Committee discuss
the question of the application of the updated IEEE-SA By-Laws to “work in
process” at IEEE-SA.
My request is prompted by the submission on September 1st of the
letter attached to document IEEE 802.11-15/1026r0 (available at https://mentor.ieee.org/802.11/dcn/15/11-15-1026-00-0000-communication-to-patcom-related-to-802-11ah.pdf
). The reference in the September 1st letter to a 2009 blanket
Letter of Assurance submitted by CSR to cover ongoing work in the IEEE-SA
802.11ah working group suggests a possibility that the Patent Committee should
carefully consider. The possibility is that the submitter of the September
1st letter believes that its reference to a Letter of Assurance dated
before the effective date of the updated By-Laws (March 15, 2015) means that all
patents identified by the submitter of the earlier Letter of Assurance (or, in
this situation, a subsequent acquirer of the submitter) as essential to 802.11ah
are covered by the By-Laws text as of the date the earlier Letter of Assurance
referenced in the September 1st letter was submitted.
If that belief is correct, the
effect would be that any participant in IEEE-SA standards development that can
find a blanket LoA submitted before March 15 can continue to participate in
standards development at IEEE, avoid the implications of a refusal to license
patents under option (d) of the IEEE-SA Letter of Assurance form, yet evade the
application of the updated By-Laws indefinitely. Acceptance of that
position would create significant uncertainty among participants in IEEE-SA
standards development and implementers of IEEE-SA standards, uncertainty that
IEEE-SA should quickly address.
As an initial matter, it would be helpful for the Patent Committee (and, if
necessary, the Standards Board) to understand what position the submitter of the
September 1st letter is taking relative to the application of the
updated By-Laws to patents and applications it has identified and may identify
in the future as essential to 802.11ah. Second, the Patent Committee may
wish to offer guidance to participants in IEEE-SA standards development
regarding how the updated By-Laws apply to work in process. For example,
IEEE-SA could take one or more of the following positions (which are not
mutually exclusive): ·
The updated By-Laws apply to any Essential Patent Claim (as
defined in the By-Laws) essential to an IEEE-SA standard approved by RevCom on
or after March 15, 2015 ·
The updated By-Laws apply to any Essential Patent Claim
essential to an IEEE-SA standard that results from a PAR approved by RevCom on
or after March 15, 2015 ·
The updated By-Laws apply to any contribution incorporated
into an IEEE-SA standard and made by the owner of an Essential Patent Claim if
such contribution was first made on or after March 15, 2015 ·
The updated By-Laws apply to any Essential Patent Claim
contained in a patent that claims a priority date on or after March 15,
2015 The
points of potential guidance provided above are illustrative only. The
discussion during the December Patent Committee meeting may identify additional
possibilities. Please note that I am not asking the IEEE-SA to deviate
from its position that it will not decide whether the updated By-Laws do or do
not apply retroactively. Instead, I am asking the Patent Committee to
clarify to what work ongoing at IEEE-SA on March 15, 2015 the updated By-Laws
apply. Thank you in advance for your
consideration of my request that the issue of guidance regarding the application
of the updated By-Laws to work in process be included in the agenda for the
December meeting of the Patent Committee. Best regards, Gil Ohana (employed by and affiliated with Cisco
Systems) |