Re: [chairs] Reminder: Q&A on new OASIS policies

[Eduardo Gutentag <Eduardo.Gutentag@Sun.COM>]

I join this conversation with much trepidation, but there is a bit too
much misinformation and FUD going on for me to resist the temptation
to remain silent.  But let me issue a disclaimer before anything else:
I'm taking off all my hats at this moment, and in what follows I will
not be representing the views of anybody or any body other than myself.

I will not even try to answer word by word and paragraph by paragraph,
so I will just quote a few passages in this and other messages in this
thread, and hopefully I will be clear enough. As a point of information,
I have known David for some years now, so if I adopt an informal and
familiar tone in my comments to him, please understand that there are a
lot of virtual smiley's going on, and it is not my intention to be offensive.

That being said, for all those who have no patience for a long piece of
email, I guess the executive summary of my message could be said to be
"RTFM".

 > What about TC's that are not creating specifications?
[...]
 > It seems odd - since you cannot patent these things - that they
 > should have to operate with rules that assume patents are in effect?

Two mistakes. First of all, everything is patentable. The assumption that
you cannot obtain patents that contain claims that would be necessarily
infringed by the development of an application implementing, say,
DocBook or an XSLT testing harness, is false. The only safe assumption
at this point in our sorry history is that everything that can be
patented has been patented or is in the process of being patented,
(and in some countries, ahem, this is easier than in others) and there
are no shelters. Some day you should take the time to go to one of the
patent databases and be prepared to be amused and horrified. For instance,
I just went to the USPTO site (http://patft.uspto.gov/patf) and searched
for "test harness" among published ones and got 58 returns. A search
among patent applications not yet granted produces 72, of which one is for
"Generic test harness". How do you like them potatoes?

The second mistake in the above is to assume that just because a TC is
not currently producing a *technical* specification it is not creating
a specification at all, or that it will not create one in the future. It
could be argued that a best practices document is in fact a specification,
and as such its implementation may infringe on some necessary claims.

A worse mistake is contained in the paragraph that asks:

 > For example how could say the IT Director for the Government of Ireland
 > join the e-Gov TC and sign an agreement stating that he or she will
 > be abiding by the IPR policies and assigning licenses to the TC?

First of all, you're assuming that signing the agreement means that
you just assign licenses to the TC. Nothing could be farther from
the truth. Have you actually read the IPR Policy and the Membership
Agreement? When you join OASIS and sign the membership agreement all
you're saying is that, in the event that you were to join a TC and were to
become an obligated party either through contribution or participation,
you would then license whatever essential claims you have, *if you
have any!!!*, to the world (not to the TC) according to the IPR mode
of the TC you joined. So going back to your hypothetical, let's say the
Govt. of Ireland joins OASIS and then the IT Director thereof joins the
eGov TC. All that this means is that in the very unlikely event that
the Govt of Ireland had a patent that could be construed as essential
for the implementation of something the e-Gov TC came up with, and
it became an obligated party through a contribution or participation,
it would have to license its patent to the entire world on the terms
of the TC mode (in this case hopefully RF). Why is this bad? Why is it
worse than the current situation? Have you actually read the current
IPR Policy? It actually does not really obligate anybody to anything,
in my opinion. In a separate email you have asserted that the proposed
IPR policy is an enormous step backward from the current situation. This
to me means that you have read neither of them, or if you have you have
not understood them.

Then later in your message you say:

 > Similarly how could the IRS have personnel sign agreements that
 > OASIS has licensing rights over components, and that members
 > IPR claims may have to be licensed before the IRS could use
 > those technologies, which the government is regulating and is
 > covered by Acts of Congress in the first place?
 >

Where are you getting this from? Where does it say anywhere that
OASIS has licensing rights over components????? OASIS has no licensing
rights whatsoever over anything; it's the patent holding companies or
individuals who have licensing rights. You can put your head in the sand
and say there are organizations that produce patent-free specifications,
but the truth is that there aren't any such, and on top of that you
simply can't know whether someone holds a patent that they can claim
is essential for the development of a specification. All you can do
is try to regulate the behavior of those who participate in your TCs
and impose restrictions on them, so that they cannot then go wild and
actually sue end users (such as the IRS) for patent infringement, which
is what you are implying above (although you do mix up the IRS as a user
of applications and a developer of such).

Another thing you can do is what the proposed IPR Policy does, which is
make developers' lives easier by making it possible for them to know
whom to contact to even know if a given specification is burdened with
IP.

As to Harm Jan van Burg's message's implication that there are countries
that actually own IPR in the form of patents, that's news to me. However,
if that were to be true, wouldn't it be good if those countries were bound
by the same rules as companies, and if they joined an RF TC they would
then have to disclose their interests and license their claims to others
(be they companies or whole countries) under RF terms too, instead of the
latitude with which they can behave today? What is actually wrong with
that? Why is this seen in a negative light?  I don't buy the argument
that Governments or government agencies will have a hard time signing
the membership agreement. If they can sign up to similar policies in
other organizations surely they can sign up in OASIS.

Another quote:
 > [...] we are now being denighed what previously had been
 > an option in the OASIS process.

It was not an option in the process, it was a hack that, sorry, gave
the appearance of being legally binding but was not (definitely *my*
opinion, BTW, not an official opinion of anyone or any entity...) Just
because someone joined a TC with that magic verbiage in the charter
did not mean that this person could not later turn around and say "oh,
by the way, I do have a patent that is being infringed, and these are my
conditions". So what are you going to do?  Sue them? On what basis? "You
should have read the charter!"? "Oh, sorry, I didn't know, where's it
written that I have to read a TC's charter before joining it?" The sad
truth, David, is that in this day and age, when there are companies whose
only business model is to acquire IP by any possible means to then go
and sue or threaten to sue infringers, what was once called "gentlemans'
agreement" are not effective anymore.

 > The Board brushed aside the request for a 4th IPR mode - one that is
 > in-line with European patent law and IPR rules more in-line with ISO
 > and UN/CEFACT - where participants agree to operate in an
 > IPR-free-zone where they state they do not have
 > and will not seek any IPR restrictions on work contributed.

ISO? The ones that let you get a copy of their standards
one at a time and you can't copy, share or duplicate? Go to
http://www.iso.org/iso/en/prods-services/ISOstore/LicenceAgreement.html
and see them in action. Hah! Or take a look at
http://isotc.iso.ch/livelink/livelink/fetch/639511/650757/customview.html?func=ll&objId=650757&objAction=browse&sort=-modifydate
Part 1, 2.14, and I quote:

"2.14.1: If, in exceptional situations, technical reasons justify such a
step, there is no objection in principle to preparing an International
Standard in terms which include the use of items covered by patent
rights defined as patents, utility models and other statutory rights
based on inventions, including any published applications for any of
the foregoing even if the terms of the standard are such that there
are no alternative means of compliance."

And guess what -- are licenses to these patents supposed to be RF? Think
again: "2.14.2 [...]  b) If the proposal is accepted on technical grounds,
the originator shall ask any holder of such identified patent rights for a
statement that the holder would be willing to negotiate worldwide licences
under his rights with applicants throughout the world *on reasonable and
non-discriminatory terms and conditions*. Such negotiations are left to
the parties concerned and are performed outside ISO and/or IEC."

Emphasis mine: RAND, not RF in any way. Now let me translate this to you:
if a specification is known to infringe on a patent, it is ok for an
ISO standard to do so, as long as the originator of a proposal asks the
patent holder for RAND terms for all and receives them.  This certainly
reminds me of the current IPR Policy, and that of IETF, etc. Why is this
superior in your view to the proposed IPR policy? Beats me.

And UN/CEFACT? Go look at their IPR Policy at...wait, no, it's not
published, it's nowhere to be seen, the Office of Legal Affairs is still
working at it, no one knows what their IPR Policy is nor what it will
be in a few months from now, and you want OASIS to adopt something like
that? Geez.

Dave, the truth is that your IPR-free-zone is an illusion. Urban legend,
really.

The RF on Limited Terms TC Mode is what seems the most congenial policy
for what you want (have you read it carefully, by the way?). I don't
see how you can create a TC mode that forbids the participation of
those who may have patents in a certain area, which is what would
appear is what you're asking when you mention a 4th mode that is an
"IPR-free-zone". What is wrong with asking those who participate, whether
they have or not patents, to agree to license them RF and under known
and circumscribed, pre-defined terms (except for jurisdiction variations,
etc.) if they want to license, or otherwise to agree not to strike first
(that's what the phrase "non-assertion covenant" means)?

You also assert:

 > The Board composition IMHO  is unrepresentive of the overall interests
 > and consitutient mix of OASIS here.

May I remind you that the Board is elected by the OASIS membership? In
what sense then it is not representative? Why haven't you nominated
a well-known and respected member of whatever community you believe is
not represented to run for the Board last year? Or the year before?

I will not dignify your comments on the Board being directed by patent
lawyers with a response (except to say that no one in the Board is a
lawyer, so please guess whom Board members go to when they need a legal
answer to a legal question), but I do have to comment as regards this:

 > These same lawyers are saying that we can adopt royality-free policies
 > after the specification is approved.  This IMHO is just a trick.

Say what? What have you been hearing? That you cannot adopt royalty-free
policies before a specification is approved? Who has been saying that? The
whole point of the Policy is that you can adopt 3 TC modes, of which 2 are
Royalty Free, before anything is approved or not. But again, please  do
not rely on what people tell you, simply go and read the proposed Policy.

Then you say "But there are alternatives clearly", and you list
alternatives that, which the exception of license free, are all covered by
the proposed Policy. And at this point, after reading all your messages,
I'm not sure even you know what you mean by "license free".

 > Notice that none of those big corporate lawyers work for companies
 > that are contributing centrally to those TCs work.

Quite untrue. I'll say this for you: you really have brass ones to
come out with this kind of statements.

 > This is all about trust

Correct, of which obviously you don't have much to offer; but I'd
recommend that before spreading innuendo and accusations you do your
homework to see if you can substantiate them.

Finally, regarding one of your closing sentences:

 > ... With other people who have chosen one of the 3 IPR modes
 > you constantly have to be asking yourself - hmmmm - is this XML schema
 > change they are suggesting something they have IPR on / pending / thinking
 > of / and I am going to have to license as part of the specifications?

I'm not sure if you realize how insulting the above is to a lot of
people, so just in case you don't, let me reassure you that it is; and
the unfortunate part of it is that you don't even realize that under the
proposed IPR policy such a participant, if he were to know all that,
as you obviously assume, would be legally obliged to disclose this
knowledge, unlike today. And if he didn't disclose he'd have a real hard
time persuading a court that you or anybody else would have to license
from him. And this is wrong because...?

Eduardo

On 10/21/2004 07:16 PM, David RR Webber wrote:
> Karl,
> 
> Thank you for organizing todays' session.
> 
> I have one supplemental question.
> 
> What about TC's that are not creating specifications? - eg
> 
> e-Government TC, IHC TC, and then others like the docbook TC,
> TAX TC (which government regulations direct), XSLT and IIC test
> suites.  
> 
> It seems odd - since you cannot patent these things - that they 
> should have to operate with rules that assume patents are in effect?
> 
> For example how could say the IT Director for the Government of Ireland
> join the e-Gov TC and sign an agreement stating that he or she will
> be abiding by the IPR policies and assigning licenses to the TC?  I have
> a suspicion that such people would not be able to get their internal
> legal folks to sign-off on that, and / or it would take months to get
> an answer.
> 
> Similarly how could the IRS have personnel sign agreements that
> OASIS has licensing rights over components, and that members
> IPR claims may have to be licensed before the IRS could use
> those technologies, which the government is regulating and is 
> covered by Acts of Congress in the first place?
> 
> We clearly do not want to be adopting policies that mean that
> certain TC's will cease to be able to function.
> 
> In fact - is there a provision here that can state that where 
> conflicts occur for existing TC's that would cause them to 
> be unable to carry out the terms of their existing charters
> that such TC's can maintain that status-quo (eg backward
> compatibility will not be broken) and continue to operate
> until such time as their work in complete and their chartered
> tasks finished.
> 
> Thanks, DW
>