Dear David and PatCom members,
I appreciate the opportunity to comment on the FAQ’s for the new (“Limited”) LOA form, and toward that end have a few observations and questions.
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I have some concerns about how the form was introduced.
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The reason for the introduction of the “13 June 2019-Limited” form at the SASB meeting in Panama was given in a single page statement, but no discussion was had regarding it. There was
an executive session at the PatCom prior to the introduction, and the PatCom executive session was not open to any SASB member if not also a member of PatCom, and there was no discussion entertained in the SASB meeting when it was adopted.
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The reason given was responsive to this statement from LOA submitter(s?) that was copied into the notice (
https://development.standards.ieee.org/myproject/Public/mytools/mob/loa-13June2019limited-statement.pdf
):
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“We will not provide an LOA with licensing assurance under the terms of the 2015 patent policy. We would, however, ask that you inform standards development participants and other interested
parties that we are willing to provide an LOA with licensing assurance under the terms of the 2007 patent policy.”
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There is no indication in the notice (linked above) that these submitter(s?) making such statements were interested
only in providing LOAs that only applied to pre-14 March 2015 projects, and yet PatCom(?) acted to create a form that only applied to such projects.
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The process by which the decision to produce this form was not public, nor did it appear to be available for comment to the generally interested and affected public, prior to a decision
being made as to how to execute to solve the indicated difficulty. What other options were or could have been considered?
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I am unclear whether the logic of this solution is sound, whether the scope of the problem was adequately determined, and disappointed that a decision on the solution was not made more
publicly. It is possible a better conclusion or at least one with less potential for controversy or thrashing could have been suggested if the decision were taken with more input.
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The box at the bottom of the new form’s pages 3 and 4 indicate that the 2007 definitions apply, but it does not explicitly disclaim the definitions incorporated by the 2015 policy change.
Given that the policy was changed in 2015 in a way to specifically characterize important licensing commitment terms with new definitions, a specific exclusion in the box, saying that no definitions in the 2015 policy apply to the
“13 June 2019-Limited”
form would obviate inappropriate argument by analogy to the new definition of Reasonable Rates in the 1 June 2019 form, and in the FAQs issued after the 2015 policy change. While at least one other’s submission provides an approach to solving for
this problem by modifying the FAQs, I think the Fraunhofer suggestions (attached) for FAQ modifications includes perhaps the most complete clarification. I don’t think it helps to not be clear about how terms will be defined, and would prefer the boxes on
pages 3 and 4 be fixed accordingly.
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I believe that the FAQ should clarify specifically that IEEE can refuse a Letter of Assurance (FAQ2, form suggestion below). If that is what is intended, why not say so? My belief is
that potential licensees will benefit from whatever bespoke information the potential licensor might be willing to provide regarding the terms to which such a patent holder will agree (above and beyond or in clarification of the bare policy obligation). Even
if the IEEE and SASB disagree with that presumption, It seems counterproductive to not state specifically what sorts of errors qualify to have IEEE reject a submitted LOAs in a new FAQ. The reason given for the introduction of the new form concluded with,
“The provision of the option for patent holders to submit licensing assurance on the custom LOA form is expected to increase the number of statements of licensing assurance that are provided to IEEE in an acceptable format.” If “acceptable format” is to be
the criteria for refusal to accept a tendered LOA, I recommend modifying FAQ2 as below:
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FAQ Number
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Issue
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Suggested Change
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Committee Response
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Accept/Reject/In Prinicple
(A-R-I)
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2
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The FAQ2 was modified to include or "accepting". However the FAQ is silent on the "refused" LOAs. It should be clarify
that the same principle applies to refused LOAs.
Additional paragraph added to clarify that only for clear error can the IEEE refuse an LOA.
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Does the IEEE determine whether a patent is essential when requesting,
or accepting or refusing
a Letter of Assurance?
No. When it requests,
or accepts or refuses
a Letter of Assurance, the IEEE has made no determination of any Patent Claim’s essentiality. It is the Submitter’s responsibility to determine whether it holds a potential Essential Patent Claim for an IEEE standard or project.
The only grounds upon which the IEEE will refuse a duly tendered Letter of Assurance is for clear error (typographic or in
format), pointed out to the tenderer for correction.
If the tender was made in good faith, the IEEE shall grant the Letter of Assurance the original submission date of the erroneous
submission as the date the corrected form is received.
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Best regards,
Michael.
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