Re: [PP-DIALOG] Applicability of LOAs

[GTW <gtw@xxxxxxxxxxxxxxxxx>]

Hello all:   This contribution addresses just the first question Don posed:

 

1. How should LOAs (blankets and others) be understood

in situations involving changes in ownership, control,

etc. especially considering updates to the Patent

Policy text?"

 

it seems to me an answer is  clearly  given in text in the current patent policy

 

An Accepted Letter of Assurance is intended to be binding upon any and all assignees and transferees of any Essential Patent Claim covered by such LOA. The Submitter agrees (a) to provide notice of an Accepted Letter of Assurance either through a Statement of Encumbrance or by binding its assignee or transferee to the terms of such Letter of Assurance; and (b) to require its assignee or transferee to (i) agree to similarly provide such notice and (ii) to bind its assignees or transferees to agree to provide such notice as described in (a) and (b).

 

The answer to the question seems to me   that whatever was stated in the original LOA is what applies to some new owner.  The principle at stake is  that some new owner of a patent claim should not have more obligation than a previous owner just because of the transfer

 

I do note there is opportunity to clarify the text in some future revision:  it seems to me that the words  “such notice “  in the second part could be confusing ... It might be interpreted that  the
“such notice”  means a new owner must provide an “accepted letter of assurance” Or could it be that the “such notice”  refers to some statement or encumbrance or reference to the first LOA.

 

Or it could be that some new FAQ could be helpful

 

 

George T. Willingmyre
President GTW Associates

 

From: Don Wright

Sent: Wednesday, June 01, 2016 3:32 PM

To: PP-DIALOG@xxxxxxxxxxxxxxxxx

Subject: [PP-DIALOG] Applicability of LOAs

 

Dear PP-Dialog participants:

 

There have been a number of discussions among IEEE standards participants concerning the applicability of LOAs.  These discussions have focused on at least the following four areas:

 

1.        How should LOAs (blankets and others) be understood in situations involving changes in ownership, control, etc. especially considering updates to the Patent Policy text?

2.       Which form of LOA is required for PARs (projects) that were already in existence when the Patent Policy text was updated on 15 March 2015?

3.       Which form of LOA is required for PARs (projects) that were started on or after 15 March 2015?

4.       How are LOAs for an amendment versus a standard interpreted?

 

PatCom has been discussing topic #1 but, at this time, has no text or other guidance to propose to further address this topic.  In this context, PatCom has reviewed not only the updated Patent Policy text but also the text in clause 6.3 of the IEEE-SA Standards Board Operations Manual (see https://standards.ieee.org/develop/policies/opman/sect6.html).

 

In regards to topics #2 and #3, PatCom notes that the text of FAQs #84 and #85 describe the effective date of the Patent Policy.  The methodology described in those FAQs is substantively consistent with the way the transition was handled with the 2007 Patent Policy update.  At this time, PatCom is proposing no changes to those FAQs or any additional FAQs on this topic.

 

Topic #4 was addressed in a separate e-mail to PP-Dialog distributed by me on 20 May 2016.

 

PatCom welcomes comments, ideas, and proposals from the PP-Dialog participants and others on these topics and looks forward to a discussion at the PatCom meeting on 29 June 2016 in Berlin Germany.  Please submit your comments, ideas, and proposals to PP-Dialog by 20 June 2016 so they may be reviewed by PatCom members and others in advance of the Berlin meeting.

 

________________________________________________________

Don Wright, President Standards Strategies, LLC 10420 Vista Hills Blvd Louisville, KY  40291 don@xxxxxxxxxxxxxxxxxxxxxxxx +1 859-396-7812

 

2016 IEEE Standards Association President-Elect

Member, IEEE SA Standards Board, PatCom (Chair) & ProCom

Chair, IEEE-ISTO Board of Directors                     

Chair, IEEE SA Nominations & Appointments Committee

Member, IEEE Nominations & Appointments Committee

Past Chair, IEEE Admission & Advancement Committee

Past Chair, INCITS Executive Board

 

No virus found in this message.
Checked by AVG - www.avg.com
Version: 2016.0.7639 / Virus Database: 4591/12341 - Release Date: 06/01/16