[RPRWG] FW: [WGCS:] Fw: New Proposals Regarding IEEE PatCom Revisions
- To: STDS-802-17@xxxxxxxxxxxxxxxxx
- Subject: [RPRWG] FW: [WGCS:] Fw: New Proposals Regarding IEEE PatCom Revisions
- From: "Mike Takefman (tak)" <tak@xxxxxxxxx>
- Date: Fri, 2 Dec 2005 09:47:34 -0500
- Reply-To: "Mike Takefman (tak)" <tak@xxxxxxxxx>
- Thread-Index: AcX2wx5hnC1dNg9rQJq8NMjTR9PA6gAjBaTg
- Thread-Topic: [WGCS:] Fw: New Proposals Regarding IEEE PatCom Revisions
RPRWGers,
New stuff coming down the Patcom pipe.
Your company patent / lawyer types might care.
cheers,
mike
-------------------------------------------
Michael Takefman tak@cisco.com
Distinguished Engineer, Cisco Systems
Chair IEEE 802.17 Stds WG
3000 Innovation Dr, Ottawa, Canada, K2K 3E8
voice: 613-254-3399 cell:613-220-6991
-----Original Message-----
From: David Ringle [mailto:d.ringle@IEEE.ORG]
Sent: Thursday, December 01, 2005 5:03 PM
To: STDS-WG-CHAIRS@LISTSERV.IEEE.ORG
Subject: [WGCS:] Fw: New Proposals Regarding IEEE PatCom Revisions
FYI
----- Forwarded by David Ringle/STDS/STAFF/US/IEEE on 12/01/2005 05:01
PM
-----
"Topp, Claire"
<Topp.Claire@D
ORSEY.COM>
To
Sent by: "l-bassuk@ti.com,
stds-patcom@IE marc.j.braner@intel.com,
EE.ORG c.camp@ieee.org," <s.adam@IEEE.ORG>,
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12/01/2005 <wdiab@cisco.com>, >,
10:38 AM "shoyler@qualcomm.com,
lindsay.michael@dorsey.com,"
<bob.grow@IEEE.ORG>, >,
"amarasco@microsoft.com,
gilohana@cisco.com,"
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"greg-ratta@att.net,
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"styson@broadcom.com"
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cc
<stds-patcom@IEEE.ORG>,
<j.gorman@IEEE.ORG>, "Lindsay,
Michael"
<Lindsay.Michael@DORSEY.COM>
Subject
New Proposals Regarding IEEE PatCom
Revisions
All,
I wanted to give you a heads up that the materials for the upcoming
PatCom meeting on Monday December 5 are available on the IEEE website in
the .zip file linked to item 5.3 at
http://standards.ieee.org/board/pat/1205patagen.html. I know that this
doesn't give you a lot of time to review the proposed changes but not
suprisingly, it took a while to get PatCom's initial feedback regarding
the proposed language. I would use the summary document and link to the
referenced documents (although you will have to separately save the
documents to be able to make the link work).
We tried to take in the feedback from all of you who attended the
September PatCom meeting regarding the impact such proposed changes
would have on industry's participation in IEEE's standard setting
activities while balancing the IEEE's mission to benefit the public by
achieving widespread
adoption of its standards. Among other things, you will note the
following:
1) Several of you suggested that the LOA may not be an
enforceable
contract. We have revised the LOA to make it more clear that it
is a
contract. Both IEEE and the Patent Holder sign the agreement. The
person
signing the LOA represents that such person has the ability to bind
the Patent Holder. We have reviewed New York law regarding
enforcement of contracts by third party beneficiaries and have
revised the LOA in compliance with such law to expressly state that
all users and implementers of the IEEE Standard are intended third
party beneficiaries with the right to enforce its terms. Frankly, if
the LOA weren't an enforceable contract, there would be little value to
having an LOA.
2) Several of you raised concerns about having the LOA binding
on
successors and assigns, particularly in the case of a blanket LOA. We
have recognized the difficulty of making such a representation and
have only required such a representation where the Patent Holder
has disclosed a
particular patent/patent application on the LOA. We explored
whether
there was a way to have the LOA run with patent so it was
automatically transferred when the patent was transferred and decided
that we have the best arguments that a purchaser of a patent covered
by an LOA is bound to the terms of the LOA if they are on notice
regarding the LOA, including blanket LOAs. We also believe the IEEE
should be notified if a patent is transferred which may be covered by
an LOA so that we can follow up with the assignee to get a subsequent
LOA if necessary. So, we required that the Patent Holder provide a copy
of the LOA to an assignee and notify the IEEE of any transfer.
3) Several of you raised concerns about having the LOA apply
to
parents and other affiliates. In the spirit of disclosure and
recognizing the constraints that some companys may have regarding
having the LOA apply to parents and other affiliates, we gave the
Patent Holder the opportunity to disclose whether or not the
licensing statements apply to its parents and other affiliates. We are
also interested in whether the Patent Holder has knowledge about
whether an affiliate has an essential patent and have given the Patent
Holder the opportunity to let us know whether they have any knowledge
and the contact information of a person at the affiliate who we could
contact.
4) Several of you raised concerns about having the LOA,
particularly
one with a blanket licensing statement, apply to Amendments -- you
equated it to writing a blank check. We have recognized the concern and
have indicated that the LOA applies to any essential patents that relate
to technology incorporated from the Standard into the Amendment. Any
new technology introduced in the Amendment would require a new LOA.
Similarly, any LOA executed for an Amendment shall apply to the Standard
when restated for any technology that is he subject of the underlying
Amendment.
5) Many of you had concerns about ex ante disclosures, particularly
if
such a disclosure is required. We have proposed that such disclosure be
optional. I know several of you continue to have concerns about
optional disclosure and I'm sure we will have a lively conversation
about the topic on Monday.
I'm very interested in any thoughts you might be able to get to me in
advance of the meeting if you are able. Otherwise, I look forward to
seeing many of you on Monday. Safe travels.
Claire
Claire H. Topp, Esq.
Dorsey & Whitney LLP
50 South Sixth Street
Minneapolis, Minnesota 55402
(612)343-8278 (phone)
(612)340-2868 (facsimile)
topp.claire@dorsey.com