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Subject: RE: [chairs] Patent license friction...
It sounds like a license registry would be helpful for this purpose. > -------- Original Message -------- > Subject: RE: [chairs] Patent license friction... > From: "Wachob, Gabe" <gwachob@visa.com> > Date: Mon, May 01, 2006 11:11 am > To: "John Messing" <jmessing@law-on-line.com>, "David RR Webber (XML)" > <david@drrw.info> > Cc: "Chairs OASIS" <chairs@lists.oasis-open.org>, "Frederick Hirsch" > <frederick.hirsch@nokia.com> > > John- > Thanks for the perspective. I think my point may not have been made > very clearly - my point was merely that in many cases, these specs > require users/implementers/etc to take an affirmative step to request > and execute separate license from one or more patent-holding members. > > I'd be surprised if most users of SAML actually go through the steps > of executing these licenses. And a big problem for large organizations > like Visa is that each one of these licenses has to be tracked and > reviewed by attorneys, etc. That sucks! We are left in a position where > we either use specs without executing proper licenses (and thereby > running the risk of *willful* infringement which runs up greater > damages) or going to a number of different companies to execute a number > of different licenses, each of which has to be reviewed and tracked > internally, etc. > > I'm not saying we can solve this problem here but there are two items > I am bringing up: > > a) I don't know if people are really aware of the need to execute these > licenses in many cases. My previous email suggested that there isn't > nearly enough clarity for casual reviewers on what the licensing terms > are for these specifications and what the mechanics are for acquiring > and executing these licenses. > > b) OASIS *can* begin to address the issue by suggesting (or at least > pushing large IP holder members to agree on) more uniform licensing > terms and licenses for patent holders wishing to contribute to RF/RAND > efforts. Additionally, the more licenses are unilateral (ie executed by > virtue of using the spec instead of being executed by virtue of signing > and returning to the licensor), the better, from an implementers point > of view. > > If vendors (who tend to be the ones holding the IP) want users to > adopt specs and standards, I would argue its in the vendors' interest to > make IP licensing as easy as possible... Especially where the intent is > *not* to create revenues streams or exert control over a technology area > via licensing! > > I would note that this is not unique to OASIS - a quick check of IETF > has many similar disclosures and promises to license (if you contact > each individual licensor) on its IPR disclosures page. > > -Gabe > > > -----Original Message----- > > From: John Messing [mailto:jmessing@law-on-line.com] > > Sent: Friday, April 28, 2006 6:21 AM > > To: David RR Webber (XML) > > Cc: Chairs OASIS; Wachob, Gabe; Frederick Hirsch > > Subject: RE: [chairs] Patent license friction... > > > > Hi David and Gabe: > > > > The below-referenced U.S. patent was awarded in 2005 to Sun > > Microsystems > > as assignee for "Single sign-on framework with trust-level mapping to > > authentication requirements" > > > > http://patft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HI > > TOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=10&f=G&l=50& > > co1=AND&d=PTXT&s1=sun.ASNM.&s2=authentication.ABTX.&OS=AN/sun+ > AND+ABST/authentication&RS=AN/sun+AND+ABST/authentication > > > > I think Gabe's original question is complicated by the period in which > > an OASIS standard was approved: one must keep in mind whether it > > occurred under a legacy IPR mode or one of the newer IP modes that are > > designed to be adopted by TC's by no later than next year. > > > > The American Bar Association's Science and Technology Law > > Section has a > > committee that is working on the relationship between patents and > > standards work. > > > > Currently IMHO there is no easy or simple answer to Gabe's inquiry. > > > > John Messing > > > > > -------- Original Message -------- > > > Subject: RE: [chairs] Patent license friction... > > > From: "David RR Webber (XML)" <david@drrw.info> > > > Date: Thu, April 27, 2006 8:43 pm > > > To: Frederick Hirsch <frederick.hirsch@nokia.com> > > > Cc: Chairs OASIS <chairs@lists.oasis-open.org>, "ext Wachob,Gabe" > > > <gwachob@visa.com> > > > > > > > > > Gabe, > > > > > > Of course the other option is to have TC work that > > precludes patented > > > material. > > > > > > I still do not see any IPR policy that specifically > > supports that option > > > - other than the legacy policy. > > > > > > To my knowledge the BOD - despite Patricks assertions that > > OASIS would - > > > still has made no effort to accommodate the OSI concerns in > > this regard > > > nor arranged any conference calls or interactions with OSI > > to move toward > > > having OASIS TC work able to comply to OSI licensing needs. > > > > > > For the life of me I cannot see anything in SAML that anyone could > > > legitimately claim to have a patented invention around. > > But then again > > > people have patents on the menu key sequence for bank ATMs > > - clearly a > > > ground breaking invention - key pad sequences. Would be > > interesting to > > > know exactly what about SAML is using such a unique > > mechanism that it is > > > a patented system? > > > > > > Assuming the patent may fall under the > > not-really-an-invention-at-all > > > category - hopefully the SAML TC can re-factor their work > > so that it does > > > not rely on any dubious or questionable patents in the > > first place... > > > > > > DW > > > > > > > > > > > > -------- Original Message -------- > > > Subject: Re: [chairs] Patent license friction... > > > From: Frederick Hirsch <frederick.hirsch@nokia.com> > > > Date: Thu, April 27, 2006 5:51 pm > > > To: "ext Wachob, Gabe" <gwachob@visa.com> > > > Cc: Frederick Hirsch <frederick.hirsch@nokia.com>, "Chairs OASIS" > > > <chairs@lists.oasis-open.org> > > > > > > Gabe > > > > > > I believe the SSTC is operating under the legacy IPR policy. TCs > > > under the current (new) policies incur much clearer and well- > > > understood obligations, which should go a long way toward reducing > > > friction and confusion. > > > > > > In general I believe the reason law tends to be difficult > > is that it > > > is difficult to clearly state in language precise rules where the > > > concerns of various parties are met. The new OASIS policy > > attempts to > > > do this as clearly as possible, specifying the "features" of the > > > license that may be used in the different IPR modes, > > providing more > > > clarity on the licenses that may be obtained. > > > > > > However, within the scope of the OASIS policy it is the right of a > > > patent holder to write their license. Likewise it is not > > unreasonable > > > to have more than one means of obtaining a license from a patent > > > holder, although it may be in everyone's interest to make it easier. > > > > > > In the specific example, I would take the "would" to > > indicate that a > > > license will be granted if and when needed, which seems > > reasonable. > > > I'd recommend consult your attorney for advice if you > > haven't already > > > done so. > > > > > > However, I believe the current IPR policy is a big step forward > > > toward clarity. However, as you note, it is realistic to expect to > > > contact patent holders for licenses as needed. > > > > > > Thanks > > > > > > regards, Frederick > > > > > > Frederick Hirsch > > > Nokia > > > > > > [1] http://www.oasis-open.org/who/intellectualproperty.php > > > > > > On Apr 27, 2006, at 4:59 PM, ext Wachob, Gabe wrote: > > > > > > > This is a real basic questions that has been nagging at me for > > > > quite a while. > > > > > > > > Lets say I want to use a OASIS specification (lets take > > SAML 2.0 - > > > > I'm not picking on them - but it makes a good > > illustration). I note > > > > that there are various IPR disclosures at > > http://www.oasis-open.org/ > > > > committees/security/ipr.php - and some of these > > disclosures state > > > > that the patent owners *will* license their Patents for > > the purpose > > > > of SAML. Some express covenants not to assert claims. > > Some point to > > > > blanket licenses on web sites. > > > > > > > > If I were a lawyer I would find this situation a) confusing, b) > > > > scattered and c) potentially dangerous. For example, on > > that page, > > > > Fidelty states that it "would grant to any other person or legal > > > > entity a royalty-free, nonexclusive, nontransferable, > > license under > > > > Fidelity's NECESSARY CLAIMS to implement the SAML v2.0 OASIS > > > > Standard, and sell, promote or otherwise distribute the > > resulting > > > > implementation. " > > > > > > > > Note the word "would". I don't see that Fidelty actually *has* > > > > granted a license. Thus, while they would now have a hard time > > > > enforcing the patent (given theories of estoppel, etc), I don't > > > > believe that Fidelty actually *has* granted a license. It > > appears > > > > that I have to go to Fidelty and get a license if I wish to use > > > > SAML. (Not picking on Fidelity - they are just first on > > the list of > > > > disclosers). > > > > > > > > Are people aware of this? Do users of SAML specifications > > actually > > > > know that they apparently aren't actually licensed to use the > > > > patents that Fidelity believes it has? Doesn't this (or > > rather, if > > > > lawyers were paying attention, *shouldn't* this) be a concern? I > > > > realize this TC operated under the legacy IPR policy - I > > wonder how > > > > that affects things. > > > > > > > > If a implementer/user of SAML were to actually be careful with > > > > their use of the SAML specs, they'd actually have to contact > > > > Fidelity to execute the license. I think this should be > > > > highlighted! If a contributor wants to contribute, and > > they don't > > > > offer a covenant or other blanket license (or a URL to a blanket > > > > license, etc), this potentially increases the friction > > for adoption. > > > > > > > > In an ideal world, there'd be one patent license that > > every patent- > > > > holder contributor would agree to -- I'm not naive to > > believe that > > > > would happen (or that OASIS could force that to happen), > > but I do > > > > believe in notice. Only as a persistent person who actually read > > > > the entire IPR disclosure page did I notice that to use SAML 2 I > > > > have to somehow negotiate a license with Fidelity.. Most people > > > > aren't going to do this and will be blissfully ignorant. > > > > > > > > I think as a practical matter, most patent holders who are > > > > contributing to OASIS specs don't really want to deal with > > > > individual licensing -- but OASIS IPR policy doesn't > > really push or > > > > guide patent holders to put up blanket unilateral > > licenses -- its > > > > up to each IPR holder to license (or covenant) in what ever way > > > > they want. > > > > > > > > THE PROPOSAL: > > > > I think, in short, that OASIS should guide patent holders > > towards > > > > the lowest friction licenses possible by suggesting (not > > forcing) > > > > patent holders to use a standardized license (or at least > > suggest > > > > that patent holders post a "click-through" or unilateral license). > > > > > > > > -Gabe > > > > > > > > P.S. If I'm wrong about any of the facts, please let me > > know ... I > > > > could have easily missed something. > > > > __________________________________________________ > > > > gwachob@visa.com > > > > Chief Systems Architect > > > > Technical Innovation and Standards Management > > > > Visa International > > > > Phone: +1.650.432.3696 Fax: +1.650.554.6817 > > > > > > > > > > > >
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