IETF 87 Ð Berlin Ð July 29, 2013 15:15 to 14:q5

Changes to IETF IPR, BCP79bis BOF-2

Scott Bradner and Jorge Contreras.


Last version was from 3/05.  Began revisions around 1/13

Draft 5 is out from comment.  Oral presentations should have oral IPR disclosure, 
can also a written disclosure, but not required.  Does not cover ÒhallwayÓ 
discussions.

Tweaked language around provisional patents.  Got rid of language surrounding 
copyright (really the non-patent IPR).

1.  What patent information needs to be disclosed?
           Names of Inventors (resistance raised by lawyers)
                       -only after publication?
                       -Make this optional?

There was push back on this because of some trade secrets issues prior to 
publication.  Suggestion is to NOT list the inventors names until after the 18 months 
or to make it optional.

Comments:  No problem with making this optional because this is easy to find.  No 
support for requiring inventorsÕ names prior to publication.  There was also no 
support for requiring the inventorsÕ names once it was publication information.    
Point made that is not IETFÕs job to build patent database and this information is 
unnecessary due to the publicly accessibility of this information.

3.  What level of participation in IETF activities is required to trigger patent 
disclosure obligations (the ÒlukerÓ question)

           -Making a Contribution, or
           -Òacting in order to influence the discussion relating to the IETF Standards 
ProcessÓ
           -Participating in part of a live session = participating in the whole session
                       -Merely attending a live session does not equal participating
           -Emailing a list equals participating in that email discussion and successor 
discussions
                       -Merely subscribing to a list does not equal participation

Orlando summary is if you participate, you must disclose. 

Comments:  Last two points do not reflect consensus from either Orlando or the 
mailing list.  One comment says that we need to keep the disclosure requirement 
very narrow.    A great many concerns around what triggers the requirement and 
how long does that last?  Question:  Is this informative language or is it normative 
cases where you have to disclose?  Answer:  This language is under the definition 
section of what it means to participate.   Suggestion to make this purely informative 
and allow the parties to fight it out in court.  Comment that the first and second 
bullet are clear and sufficiently broad, but the other bullets just seem to be Òcorner 
casesÓ.  Suggestion is to leave 1.k as it is.  Another comment in support of narrow 
disclosure requirement.  There are concerns that too broad a definition may stifle 
participation.  Suggestion to leave the first two bullets and then use normative 
examples to illustrate. 

4. Updating Disclosures

When must a patent disclosure be updated?
           -Participant becomes aware of new IPR covering Contribution (e.g., due to job 
change or acquisition of companies/patents)
           -Material change to IEF document causes more patents to apply
           -Publication of unpublished application

Comment:  Putting down the patent application number should be required because 
this will help to track.  Suggestion that you should only update when you havenÕt 
provided enough information to identify the IPR.

Point was made that bullets one and two are not really an ÒupdateÓ to an existing 
IPR disclosure, but are in fact a NEW disclosure.

Comment on the third point.  Most important issue is what is a NEW disclosure and 
what is an UPDATE to an existing disclosure.  Point taken that more clarity is needed 
on this issue.

5. Licensing Statements (optional)

Voluntary statements about patent licensing made in IPR disclosures
           -Still not mandatory (i.e., No ÒFRANDÓ minimum)
           -But if made, are irrevocable
           -Royalty-free is often preferred, but disclosures may also include a statement 
about royalties         
           WGÕs should not engage in collective license negotiation.

IETF is one of the only standards bodies where this is not mandatory.  

Comments:  Question about whether we want to make a further distinction.  Should 
we need to include a way for members to advise that no license is required to use 
the IPR.  Perhaps we need to allow a disclosure of a covenant not to sue.  Some point 
that you do not need this in the policy because parties will do whatever they want.  
There was a counterpoint made that putting it in the policy raises awareness.  There 
was some suggestion for additional information like an FAQ.  More points made 
about section 7.  The preference in IETF WGÕs is for royalty-free licenses.  There was 
some discussion about when IPR can cover the standard.  A suggestion was made 
that there needs to be wording about WG consensus on IPR-free standards.

6.  Noncompliance

Added paragraph 3 of Sec. 6 referencing new IESG administrative penalties for 
noncompliance (failure to disclose)
           -which do not override other legal remedies
[NEW] How to treat format noncompliance?
           -References to multiple docs
           -Failure to list specific patents
           -Should these be posted as ÒGeneralÓ disclosures?

Comment was that a blanket statement is in compliance with Section 5.  Current 
rules say that if you make a general, blanket statement then you must proceed 
royalty-free. 

7. General Disclosures

[NEW] How to treat ÒGeneralÓ disclosures?
           -Why do we allow them?
           -Is IETF obligated to publish them?
                       -Is there any filer (relevance, rationality?)
           -Should these be mentioned in the policy? [The do exist]
           -What effect, if any, do they have?
                       -Purely informational?
                       -Noncompliant?
                       -Simple publication pass-thru?

Comment:  We should publish everything.  Not enough bandwidth to filter.  Throw 
information at the community and allow them to deal with the information as they 
will.  IPR statements could make it difficult for IPR .  The suggestion was to have a 
mechanism whereby outlandish claims can be challenged publicly.

Closing remarks.  Glad to see we made forward progress on the issue of 
participation.  The hope is that this can be closed out on the mailing list and the 
other issue too.