Current Patent Practice (original) (raw)

W3C Note 24 January 2002

This version:

http://www.w3.org/TR/2002/NOTE-patent-practice-20020124

Latest version:

http://www.w3.org/TR/patent-practice

Previous version:

(none)

Editor:

Daniel J. Weitzner, W3C/MIT, djweitzner@w3.org

Author:

Daniel J. Weitzner, W3C/MIT, djweitzner@w3.org

Abstract

This document describes current patent practice followed by the World Wide Web Consortium. This practice includes disclosure rules, process for setting goals for the licensing terms under which Recommendations can be implemented, and a dispute resolution process in the event these goals are not met.

Status of This Document

In response to requests to clarify current W3C patent practice, this document was prepared by the W3C Team and reviewed by the W3C Advisory Board. The Advisory Board recommended that this document be published at its 22 January 2002 meeting. On 1 March 2001, the Advisory Board suggested that the Team begin to implement the draft patent policies of the Patent Policy Working Group (PPWG). The patent practice described in this document represents the current state in the evolution of the Team's implementation. This document draws heavily on the work of the PPWG, although it has not been approved by that group. Links in this document provide references to definitions and processes developed by the PPWG, and to examples of its implementation since March 2001.

A final patent policy is also under development by the W3C Patent Policy Working Group (Members only). Nothing in this document will prejudice or constrain the outcome of that policy development work. The final policy will be subject to W3C Advisory Committee review and a formal decision by the Director.

Comments about this document may be sent to the public mailing listwww-patentpolicy-comment@w3.org.Public archives are available. A list of current W3C Recommendations and other technical documents can be found at the W3C Web site.

Abstract
Status of This Document
1. Goals and Overview
2. Licensing Requirements in New Working Group Charters
3. Disclosure Rules
4. Patent Advisory Groups (PAG)
5. Acknowledgements
6. Appendix: Definitions
7. Appendix: References

1. Goals and Overview

This current practice has evolved in order to satisfy the goal held by a number of W3C Members and significant parts of the larger Web community: that W3C Recommendations should be, as far as possible, implementable on a Royalty-Free basis [AC]. The current practice described here seeks to

establish Royalty-Free implementation as a goal for Recommendations produced by new and re-chartered Working Groups;
encourage maximum disclosure of patents that might prevent a W3C Recommendation from being implemented on a Royalty-Free basis;
provide a process for addressing situations in which the goal of Royalty-Free implementation may not be attainable.

This document relies on the definition of Royalty-Free licensing as described in the W3C Patent Policy Framework Last Call Working Draft [PATENT-POLICY]. Note that current W3C patent practice does not require any W3C Member to make a Royalty-Free licensing commitment for essential patents it may hold. Such a commitment is under discussion in the Patent Policy Working Group for possible inclusion in of the final patent policy, but has not been implemented.

2. Licensing Requirements in New Working Group Charters

Each new or re-chartered Working Group will be chartered with a patent licensing requirement. At present, only Royalty-Free (RF) Working Groups will be created. This requirement describes the licensing terms according to which the final Recommendation ought to be able to be implemented. It doesnot impose any licensing requirements on either Working Group participants or W3C Members as a whole. Experience over the last year has shown that putting licensing requirements in the charter raises awareness and exposes potential patent issues earlier in the process, which makes better use of everyone's resources. If there is doubt as to whether a Working Group can produce an RF Recommendation, the PAG proceduredescribed below is invoked.

At present we only have a process for RF Working Groups. While we do not currently have a process for RAND groups, the Patent Policy Working Group has been asked [AC] to look into creating one.

3. Disclosure Rules

All W3C Members are obliged to disclose patents following the existing requirements in the W3C Process Document (see section 2 of [PROCESS]). Disclosures should take the following form:

I [do not] have personal knowledge of [any] IPR claims held by [organization] regarding [subject].

Disclosures must cite specific patent numbers that are considered possibly essential to a named specification. All disclosure statements made by W3C Members are made public with each publicly-visible Working Draft (public Working Draft, Last Call Working Draft, Candidate Recommendation, Proposed Recommendation, Recommendation).

4. Patent Advisory Groups (PAG)

In the event a Working Group participant has disclosed a patent that may be essential, but has not declared licensing terms, then a Patent Advisory Group will be launched to resolve the conflict. The PAG is an ad-hoc group constituted specifically in relation to the Working Group with the conflict, and will meet in order to help the Consortium find a resolution to the identified problem and then dissolve. During the time that the PAG is operating, the Working Group may continue its technical work within the bounds of its charter.

A PAG will be triggered for a Working Group by one of two conditions:

incomplete patent disclosures from Working Group participants in good standing
discovery of specific patent claims likely to be essential that are not available on RF terms.

Incomplete Patent Disclosures

Patent disclosures are considered complete if every member in good standing of the Working Group has filed a disclosure, through the Member's Advisory Committee representative, that fits one of the following descriptions:

"To the best of my personal knowledge, my organization has no essential patents."
"My organization has patents that may be essential.", along with an enumeration of the patent numbers.
"My organization may or may not have essential patents. If we do, we agree to license them on Royalty-Free terms to all implementers, whether or not they are Members of W3C." This licensing commitment may also be replaced with specific, Royalty-Free licensing terms.

Non-RF License Terms for Specific Patent Claims

If any essential claims become known through the disclosure procedure which are specifically indicated to be unavailable on Royalty-Free terms, then a PAG must be launched.

Working Groups whose specifications have already advanced to Candidate Recommendation, Proposed Recommendation, or Recommendation status will not be subject to these requirements unless the Director considers it vital to the openness and interoperability of the technology in question.

4.1 PAG Composition

The PAG is composed of:

The Advisory Committee representatives of each W3C Member organization participating in the Working Group (or alternate designated by the Advisory Committee representative)
Working Group Team contact
Working Group Chair, ex officio
Domain Leader responsible for the Working Group
Other W3C Team members as needed

W3C Member participants in the PAG should be authorized to represent their organizations' views on patent licensing issues. Any participant in the PAG may also be represented by legal counsel, though this is not required. Invited experts are not entitled to participate in the PAG, though the PAG may chose to invite any qualified experts who would be able to assist the PAG in its determinations.

4.2 PAG Procedures

The PAG will be convened by the Working Group Team contact, based on a charter developed initially by the Team. The charter should include:

clear goals for the PAG, especially a statement of the question(s) the PAG is to answer;
duration (maximum 90 days);
confidentiality status, which must follow the underlying Working Group (Member only, public, etc.).

The PAG may seek an extension of time from the Director, but must state a reason for extension and report on progress to date. The PAG, once convened, may propose changes to its charter as appropriate, to be accepted based on consensus of the PAG participants. The Team will choose a member of the PAG to serve as Chair.

4.3 PAG Conclusion

After appropriate consultation, the PAG may conclude either:

The initial concern has been resolved, enabling the Working Group to continue
The specification under development should be produced on RAND terms.
Note that there is neither clear support amongst the Membership for producing RAND specifications nor a process for doing so. Therefore if a PAG makes a recommendation to proceed on RAND terms, Advisory Committee review and Director's decision will be required. It is also possible that a the PAG could recommend that the work be taken to another organization.
The Working Group should be terminated.

In either case, the PAG must state its reasons in a W3C document to become public with the next public draft of the specification.

The PAG procedure has been in effect since April 2001 [PAG-PROCESS] and used for the SMIL PAG, the SVG PAG, and the Voice Browser PAG. The disclosure summaries produced by the PAGs for the SVG [SVG-IPR]or SMIL [SYMM-IPR] Recommendations illustrate how the PAG process works to provide more information to developers about licensing issues related to particular W3C Recommendations. In both cases, many participants provided Royalty-Free licensing offers for all Essential Claims. Some other participants made RAND commitments. In the case of those who made RAND commitments, however, those participants did not disclose specific Essential Claims, as far as the PAG could see. Based on this information, the PAGs recommended to the Director that the Recommendations should be issued.

The presentation format for the disclosure and licensing information are useful examples to follow. In the case of the Voice Browser PAG, no final Recommendation has yet been issued.

5. Acknowledgements

Thanks to the W3C Advisory Board for guidance through the transition in W3C patent policy. The author also thanks all W3C Working Group Chairs, Advisory Committee representatives, and Team members who contributed to the development of W3C's current patent practice by being on the rough edge of these processes as they have evolved. Finally, many thanks to all of the participants in the Patent Policy Working Group who continue to work toward the development of the final policy.

6. Appendix: Definitions

Current practice uses the following licensing definitions from the Patent Policy Working Group's 16 August 2001 Last Call Working Draft [PATENT-POLICY]. These definitions, copied verbatim from the Last Call Working Draft, are reproduced here for convenience.

Essential Claims

"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date within one year and one day after the publication of the first Public Working Draft, in any jurisdiction in the world, that a Member (or a licensor or licensee, with reference to entities other than Members) owns, or under which a Member (or a licensor or licensee) has the right to grant licenses without obligation of payment or other consideration to an unrelated third party, that would necessarily be infringed by implementation of the Recommendation. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing the required portions of the Recommendation. Existence of a non-infringing alternative shall be judged based on the state-of-the-art at the time the specification becomes a Recommendation.

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

any claims other than as set forth above even if contained in the same patent as Essential Claims; and
claims which would be infringed only by
- portions of an implementation that are not required by the Recommendation, or
- enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Recommendation but are not themselves expressly set forth in the Recommendation (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or
- the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Recommendation.

For purposes of this definition, the Recommendation shall be deemed to include only architectural and interoperability requirements and shall not include any implementation examples or any other material that merely illustrates the requirements of the Recommendation.

RAND License

RAND stands for "reasonable and non-discriminatory" terms. A "RAND License" shall mean a license that:

shall be available to all implementers worldwide, whether or not they are W3C Members;
shall extend to all Essential Claims owned or controlled by the licensor and its Affiliates (except as described in section 8.2 concerning licenses relating to Contributions);
may be limited to implementations of the Recommendation, and to what is required by the Recommendation;
may be conditioned on a grant of a reciprocal RAND License to all Essential Claims owned or controlled by the licensee and its Affiliates. For example, a reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all (including, in the case of a license to a Contribution, the original licensee).
may be conditioned on payment of reasonable, non-discriminatory royalties or fees;
may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee, but may include reasonable, customary terms relating to operation or maintenance of the license relationship such as the following: audit (when relevant to fees), choice of law, and dispute resolution.

Royalty-Free License

A "Royalty-Free License" also called "RF License" shall have the same characteristics as a RAND License, except that a Royalty-Free License:

may not be conditioned on payment of royalties, fees or other consideration except for the conditions permitted in the clauses of RAND License other than clause 5.
may require that all licensees make any Essential Claims they control available to all on a no-royalty basis.
shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the Royalty-Free License as offered by the licensor.