After consulting with some legal experts within IBM, I, too, have some
comments (issues) with the current proposal for PWG INTELLECTUAL
PROPERTY PROCEDURES.
> Section 8.1 (a) Ownership of IP rights:
...
> The PWG may, through its activities, generate intellectual property,
> and license such property to Members and/or Associates on reasonable and
> nondiscriminatory terms, conditions and prices; provided, however, that
> Members and Associates receive more favorable pricing than non-Members or
> non-Associates.
If the PWG were to license its own Intellectual property on less
favorable terms to non-members, this could raise an anti-trust
exposure. This paragraph should be removed.
> 8.1 (c ) Intellectual Property Procedures
>> The PWG is not in a position to give authoritative or comprehensive
> information about evidence, validity or scope of patents or similar
> rights, but it is desirable that any available information should be
> disclosed. Therefore, all PWG members should, from the outset, draw PWG's
> attention to any Relevant Patents (hereinafter defined) either their own
> or of other organizations including their Affiliates (hereinafter
defined)
> that are known to the PWG members or any of their Affiliates, although
PWG
> is unable to verify the validity of any such information.
In practice, it is unusual for one person or company to disclose
the patents of another. Since patent *applications* are confidential
(and can take a long time to process) it would require highly unusual
circumstances for those to be disclosed.
If the intent is that we should simply share whatever awareness we
happen to have regarding our own or anyone's (ISSUED) patent related
to a specific topic the PWG is investigating, this is probably OK.
However, there should be no *affirmative obligation* to search out
patents and make determinations as to their reading. Not only would
this be costly and time-consuming, there does not appear to be any
means to monitor conformance to such a requirement.
> 8.1 (d) Patent Statement
>> If a Proposed PWG Standard is submitted to the PWG, three different
> situations may arise with respect to the relevant Patents:
>...
>> (5) If no Relevant Patents that are owned by the PWG member or any of its
> Affiliates are known to the PWG member or any of its Affiliates, an
> affirmative disclosure to that effect must be submitted before the end of
> the Patent Statement deadline in lieu of the Patent Statement. Any
> Relevant Patents that are owned by the PWG member or any of its
Affiliates
> and are found after the Patent Statement deadline are automatically
> subject to either paragraph 8.1(d)(1) or (2) as described above.
The mandate for affirmative disclosure that no relevant patents are
known should be removed or, at a very minimum, scoped to the individual,
not the member's corporation or affiliates. Some companies are so
large and disassociated that it may be impossible for any one employee
to be aware of all the intellectual property held by that company. Again,
it would be prohibitive to impose an exhaustive patent search by each
company (even on itself) every time the PWG embraces a new notion. A
better approach would be for companies participating in the PWG to adopt
an open licensing policy and be willing to license under reasonable T&Cs.
There are laws that would cover the blatant misuse of patents in a case
where someone knowingly and deliberately "lured" the PWG into developing
a standard based on their intellectual property and then tried to extract
unreasonable terms after the fact.
> (6) Format of Patent Statement/Patent Notice
>> (i) A Patent Statement should be submitted by all the PWG members for
each
> item found in case that the Relevant Patents which are known to the PWG
> members and their Affiliates and are owned by the PWG members or their
> Affiliate, providing the following information:
>> 1. Proposal Name
> 2. Organization: The organization that holds the patent which could
> include administrations, universities, etc., and its contact address.
> 3. Tel. No.: The contact telephone number of the organization.
> 4. Fax. No.: The contact fax number of the organization.
> 5. Patent Policy and Remarks: The declared patent policy of the
> organization in its communication to the PWG. Most often the patent
policy
> is given as "Pat. Policy. 8.1(d)(2)", which would mean that the
> organization subscribes to paragraph 8.1(d)(2) of the PWG bylaws.
> 6. Patent Title: The title of a patent
> 7. Patent Number: The number of the patent.
> 8. Patent Country: The country in which the patent has been obtained. If
> the patent is held in several countries, a list of those countries is
> given.
> 9. Signature: Signature of an authorized representative of the company.
Again, it is not appropriate to encumber the standards process with
an affirmative obligation to search patents for their reading on every
PWG topic. Therefore, it is not reasonable to expect PWG members to
provide all this information for every specific patent that may be
applicable.
> (ii) Further, a Patent Notice should be submitted by all the PWG members
> for each item found in case that the Relevant Patents which are known to
> the PWG members and their Affiliates and are not owned nor controlled by
> the PWG members or their Affiliate, providing the following information:
>> 1. Proposal Name
> 2. Organization: The organization that holds the patent which could
> include administrations, universities, etc., and its contact address.
> 3. Patent Title: The title of a patent
> 4. Patent Number
> 5. Patent Country: The country in which the patent has been
obtained.
> If the patent is held in several countries, a list of those countries is
> given.
> 6. Signature: Signature of a representative of the company
Again, it would be quite unusual to submit a statement about known
patents of others. This should be removed.
> 8.3 Infringing Material.
>> The PWG or its individual Members and Associates shall have no liability
> to third parties for any infringement claims with respect to any
> intellectual property licensed from a Member or Associate incorporated
> into the PWG standard. ("Licensed Property"). The Member or Associate
> providing the Licensed Property to the PWG or to other individual Members
> or Associates shall be required to protect and indemnify the PWG and its
> officers, directors, and agents, as well as other Members and Associates
> against such infringement claims arising out of the Licensed Property
> provided, however, that the PWG and all Members and Associates cease
using
> such infringing information or material. Members or Associates shall
have
> no liability under Section 8.3 for any claim, suit, or proceeding based
> upon any modification of Licensed Property by the PWG or its Members or
> Associates.
Just saying you have no liability (last sentence) will not protect
you from 3rd party suits. It is not likely that all the companies
represented by PWG members will agree to indemnify the PWG.
Incorporation may be the proper vehicle to protect individual PWG
members and officers from liability.
Harry Lewis - IBM Printing Systems
harryl at us.ibm.com