[802SEC] Re: Request of Stds Bd members to Evaluate Patent Letter ofAssurance Template
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Clyde:
Since you and I discussed these issues at the last two Standards
Board meetings, I wanted to respond directly to you regarding the
letters that Jim Carlo distributed to the 802 Executive Committee.
I think you are on the right track. I believe we must have a "form
letter of assurance" so that everyone is in the same position. This
is much better than each company crafting its own letter and looking
for an edge. Some of the ways some companies try to find an edge are
detailed in "Beating the System: Abuses of the Standards Adoption
Process" (_IEEE Communications Magazine_, July 2000, or
http://www.comsoc.org/ci1/private/2000/jul/Kipnis.html for
subscribers). The article abstract says "The current processes by
which telecommunications standards are adopted are flawed. Certain
companies are able to exploit these flaws to extract hundreds of
millions of dollars in patent royalties from the telecommunications
industry." A form letter doesn't solve all of the problems
highlighted in the article, but it does address some. I think that
the form should be mandatory.
Your cover letter says "The Letter of Assurance form would be
forwarded to a patent owner, when a specific patent is identified as
having a potential necessary claim, which would result in a patent
infringement when the IEEE standard is implemented." I think that we
need to refine this process to address a number of issues, some of
which are discussed in the paper cited above. One thing I've been
worrying about lately is this realistic situation: a standard has two
modes of operation; the user must implement one to comply with the
standard. Let's say that each mode has an associated patent. Neither
patent is "essential", since both modes are optional. Therefore, IEEE
would not require a letter of assurance. However, compliance with the
standard is impossible without infringing on at least one of the
patents so, without licenses from at least one of the parties, it
will be impossible to implement the standard. I think that the form
letter should address this situation, though it might not be easy to
do so.
Here are a few specific concerns I have with the form:
(1) The opening premise:
"The Patent Holder owns or controls granted patent(s) and/or pending
applications that it believes would be infringed by compliance to the
Proposed IEEE Standard."
seems to be inconsistent with answering "No" to item 3a:
"Does Patent Holder agree that its patent is infringed by compliance
to the [Proposed] IEEE Standard?"
I do think the form should offer an opportunity for people to declare
that there is no patent infringement. Some rearrangement would let
them do so consistently.
(2) There ought to be an option for the form to cover _all_ IEEE
standards. The IEEE-SA now has many corporate members. It could
suggest that corporate "good citizens" who support the IEEE-SA might
be willing to submit such a blanket letter and never have to deal
with it again. There might be few takers, but if one company signed
on, IEEE-SA could trumpet the result as an endorsement of our
process, and maybe others would follow the lead.
Of course, people could always write "All IEEE Standards" on the
line, but I think that an explicit checkbox would let people know
that the IEEE-SA thinks this is a realistic option.
(3) I don't understand why "license" is italicized. Also, the
asterisk on "license" is misplaced; it should be on
"non-discriminatory".
(4) In the footnote, the second part (the non-sentence starting with
"Nor") is vague. I don't think it's relevant to discuss what is
"reasonable"; the issue is whether a certain behavior is allowable
under this agreement. The footnote's first sentence is a good model
of how to write this. The form should also define "reciprocity
requirement".
(5) More generally, I would like a definition of
"non-discriminatory", since it has a number of interpretations ("The
Effect of Industry Standard Setting on Patent Licensing and
Enforcement", _IEEE Communications Magazine_, July 2000
<http://www.comsoc.org/ci1/private/2000/jul/Rees.html>).
Roger