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Versions: (draft-brim-ipr-wg-guidelines) 00 01 02 03 04 05 RFC 3669

IPR                                                              S. Brim
Internet-Draft                                       Cisco Systems, Inc.
Expires: April 25, 2003                                 October 25, 2002


     Guidelines for Working Groups on Intellectual Property Issues
                    draft-ietf-ipr-wg-guidelines-00

Status of this Memo

   This document is an Internet-Draft and is in full conformance with
   all provisions of Section 10 of RFC2026.

   Internet-Drafts are working documents of the Internet Engineering
   Task Force (IETF), its areas, and its working groups.  Note that
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   Drafts.

   Internet-Drafts are draft documents valid for a maximum of six months
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   This Internet-Draft will expire on April 25, 2003.

Copyright Notice

   Copyright (C) The Internet Society (2002).  All Rights Reserved.

Abstract

   This memo lays out a conceptual framework and rules of thumb useful
   for working groups dealing with IPR issues.  It documents specific
   examples of how IPR issues have been dealt with in the IETF.












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Table of Contents

   1.  Introduction . . . . . . . . . . . . . . . . . . . . . . . . .  3
   2.  The Problem  . . . . . . . . . . . . . . . . . . . . . . . . .  3
   3.  The Approach . . . . . . . . . . . . . . . . . . . . . . . . .  4
   4.  Case Studies . . . . . . . . . . . . . . . . . . . . . . . . .  5
   4.1 IPS WG (IP Storage)  . . . . . . . . . . . . . . . . . . . . .  5
   4.2 PEM and PKI issues . . . . . . . . . . . . . . . . . . . . . .  5
   4.3 CDI WG (Content Distribution Internetworking)  . . . . . . . .  6
   4.4 VRRP (Virtual Router Redundancy Protocol)  . . . . . . . . . .  7
   4.5 Secure Shell (SecSH) . . . . . . . . . . . . . . . . . . . . .  7
   4.6 IDN (Internationalized Domain Name)  . . . . . . . . . . . . .  7
   5.  General Principles . . . . . . . . . . . . . . . . . . . . . .  9
   5.1 Types of IPR . . . . . . . . . . . . . . . . . . . . . . . . .  9
   5.2 When to think about IPR  . . . . . . . . . . . . . . . . . . .  9
   5.3 IPR as a Technology Evaluation Factor  . . . . . . . . . . . . 10
   5.4 Patents versus Pending Patents . . . . . . . . . . . . . . . . 11
   5.5 Applicability: It's Hard to Prove a Negative . . . . . . . . . 11
   5.6 No Universal License Terms . . . . . . . . . . . . . . . . . . 12
   6.  Security Considerations  . . . . . . . . . . . . . . . . . . . 13
       References (Non-Normative) . . . . . . . . . . . . . . . . . . 13
       Author's Address . . . . . . . . . . . . . . . . . . . . . . . 14
       Full Copyright Statement . . . . . . . . . . . . . . . . . . . 15




























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1. Introduction

   This memo lays out a conceptual framework and rules of thumb for
   working groups dealing with IPR issues.  The goal is to achieve a
   balance between the needs of IPR holders and the implementers of the
   Internet which is appropriate to current times.  As part of trying to
   distill out principles for dealing with IPR in IETF working groups,
   it provides case studies of treatments of IPR issues that have
   already been worked out.  In other words, it documents the running
   code of the IETF process.

   This memo does not describe IPR procedures for document authors or
   IPR asserters.  Those are covered in two other memos coming out of
   the IPR working group, on IPR in the IETF [5] and submitters' rights
   [6].  Rather, this memo is for working groups that are trying to
   decide what to do about IPR-protected technology contributions.

2. The Problem

   Traditionally the IETF has tried to avoid technologies which were
   "protected" through IPR assertions.  However, compromises have been
   made since before the IETF was born.  The "common knowledge" of the
   IETF, that IPR-protected technology was anathema, has never dealt
   with the fact that the Internet has run on IPR-protected technologies
   from the beginning.  Nowadays the majority of the useful technologies
   brought to the IETF have some sort of IPR assertion associated with
   them.

   It will always be better for the Internet to develop standards based
   on technology which can be used without concern about selective or
   costly licensing.  However, increasingly, choosing a technology which
   is not protected by IPR over an alternative that is may produce a
   weaker Internet.  Sometimes there simply isn't any technology in an
   area that is not IPR-protected.  It is not always the wrong choice to
   select IPR-protected technology, if the choice is made knowingly,
   after considering the alternatives and taking the IPR issues into
   account.

   The IETF is not a membership organization.  Other standards making
   bodies may have membership agreements that member organizations must
   sign and adhere to in order to participate.  Membership agreements
   may include strict procedures for dealing with IPR, or perhaps a
   requirement that technology must be licensed royalty-free.  This is
   not possible in the IETF.

   Even if the IETF had membership agreements, they would be difficult
   to formulate in a way that covered IPR problems, because the IETF's
   work includes technology from other sources and because the IETF



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   collaborates with organizations that work with different approaches
   to intellectual property.  The IETF can encounter four different IPR
   situations, at almost any time during the life of a document:

   o  A draft submitter notes its IPR claim regarding the contents of
      the draft.

   o  An IETF participant asserts that the contents of a draft is
      covered by their own IPR.

   o  IPR is noted, by the author of a draft or by a different IETF
      participant, that is claimed by an organization that does not
      participate in the IETF at all.

   o  An organization that does not participate in the IETF, but that
      monitors its activities, discovers that a draft intersects that
      organization's established or pending intellectual property
      claims.  It may come forward right away, or wait and let the IETF
      work progress.

   The IETF does not have detailed rules for each situation.  The IETF
   does not force IPR-related behavior on anyone.  It only sets criteria
   for a technology document becoming an Internet standard.  Working
   groups have essentially only one rule they can invoke -- about
   individuals not participating in activities related to a technology
   if they do not disclose known IPR.  Other than that a working group
   only has recommendations and requests.

   Since every case is unique, and there are close to no general rules,
   working groups need a great deal of freedom in dealing with IPR
   issues.  However, some amount of consistency is important so that
   both contributors and users of eventual standards can know what to
   expect.

3. The Approach

   The organizing principle of this memo is to give working groups as
   much information as possible to make informed decisions, and then
   step out of the way.  The other IPR working group memos (see the IPR
   Working Group charter page [1]) lay out what needs to be done once a
   particular piece of technology is selected as a working group draft.
   That doesn't help when a working group is trying to decide whether to
   select a technology or not in the first place.  Thus this third memo.
   We want to build a conceptual framework, a new set of "common
   knowledge", to make it easier for working groups to deal with
   intellectual property issues.

   To do so, we first present "case studies" in Section 4 -- real events



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   that have happened in recent years, and how different working groups
   dealt with them -- plus notes on possible lessons to be learned.  In
   Section 5, we expand on these lessons to be learned and try to
   extract general principles.

4. Case Studies

   The best way to know what works is to look at past attempts at
   dealing with IPR.  The following are selected as cases from which
   general lessons might be extracted.

4.1 IPS WG (IP Storage)

   The IPS Working Group evaluated technology developed outside of the
   working group, "secure remote password" (SRP, RFC2945 [4]).  At the
   time, there was one known IPR assertion, and the proposed licensing
   terms were apparently reasonable.  SRP had become a proposed standard
   without going through any working group, so IETF participants may
   have been less likely to notice it in order to make statements about
   IPR.  In any case, two more possible IPR claims were uncovered after
   the IPS working group had already decided to make SRP required.  One
   of the possible IPR holders did not make a strong IPR assertion
   itself, and did not want to take the time to determine whether it
   actually had a claim, though it acknowledged it might have a claim.
   Also, in both cases it was difficult to obtain information on
   possible licensing terms, even though words like reasonable and non-
   discriminatory were used in IPR statements, and rumors of what they
   might be did like not sound good.  The working group participants
   took the assertions, potential and otherwise, very seriously, and
   decided not to use SRP after all, even though they had already chosen
   it based on other criteria.

   Lessons:

   o  IPR assertions may appear at any time in the standards process.

   o  Take impreciseness seriously.  Attempt to get clarification on
      both IPR claims and licensing terms.


4.2 PEM and PKI issues

   PEM (Privacy-Enhanced Mail) wanted to use public key technology.  In
   the mid-90s, the basic principles of public key infrastructure had
   been patented for years.  The patent holder had shown a tendency to
   actively enforce its rights, and to prefer software sales to
   licensing.  This was seen as a significant potential issue, one which
   could possibly interfere with the easy development of the Internet.



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   However, there was no alternative technology that came close to its
   capabilities.  Adopting an alternative would have damaged the
   Internet's health and flexibility even more than adopting a
   technology with IPR assertions.  The case was so compelling that the
   working group participants decided to move forward on standardizing
   it and even requiring it.

   One factor which was noted was that the patents were mature, and
   would expire within a few years.  That meant that although the impact
   might be significant to start with, it would not be in the long run.
   This lowered the perceived risk of using the IPR-protected
   technology.

   Lessons:

   o  IPR is just one issue in deciding whether to adopt a technology.

   o  IPR is not an all or nothing issue.  There are different types and
      levels of IPR protection.

   o  The IPR's lifecycle phase can be a consideration.


4.3 CDI WG (Content Distribution Internetworking)

   The CDI Working Group laid out an overall architecture and found that
   a number of included technologies had IPR claims associated with
   them, based on work done before the working group was started.  The
   working group participants decided there was little chance of
   producing alternative technologies which were as useful and which did
   not run up against these IPR assertions.  As usual, there was no good
   way to evaluate assertions and possible licensing terms until after
   the technology had been completely specified (at the earliest).

   Working group participants generally thought they had a good idea
   what to expect from each other, and that the ultimate benefits of
   using the technologies outweighed the IPR issues.  The working group
   participants decided not to consider IPR as an issue at all in
   determining which technologies to adopt.

   Lessons:

   o  Past experience can be used as a significant factor in evaluating
      the possible impact of IPR.







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4.4 VRRP (Virtual Router Redundancy Protocol)

   The working group was standardizing VRRP based on a protocol
   developed outside the IETF.  The IPR holder supported that protocol
   and stated that it would license its IPR for that protocol if it
   became the standard, but not for the similar protocol the working
   group was developing.  The working group participants decided to go
   ahead and standardize its protocol anyway.  The IPR holder has only
   asserted its patent when someone else asserted a patent against it.
   There is no evidence that the working group participants actually
   thought about the implications of the IPR when it went ahead with its
   choice of protocol.

   Lessons:

   o  IPR assertions should never be disregarded without good cause.
      Due diligence should be done to understand the consequences of
      each assertion.


4.5 Secure Shell (SecSH)

   This was primarily a trademark issue, not a patent issue, since the
   patent issue had been worked out outside of the IETF.  The holder of
   a trademark wanted the IETF to stop using "SSH" in the names and text
   of its proposed standards.  The working group participants thought
   through the details of the claims, and possible implications and
   risks, and decided to go ahead and continue using the names as they
   are now.  This issue is still being worked through.

   Lessons:

   o  Working group participants can evaluate IPR assertions not only
      for their possible validity, but also for the risk of misjudging
      that validity.  The impact of honoring the IPR claim may be major
      or minor.


4.6 IDN (Internationalized Domain Name)

   The IDN working group dealt with a number of IPR assertions.  Several
   were made which did not overlap with the technology -- the IPR
   asserters said the patents were being announced just in case the
   working group decided to go that way.  In one case, even though a
   patent was announced as purely defensive, the working group
   participants investigated the claims themselves.  They concluded that
   it did not overlap.




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   In one case, an IPR claimer asserted that the working group's
   documents, and in fact the IETF as a whole, were infringing on its
   rights.  Individual working group participants consulted with their
   legal advisers, concluded that the claims would not overlap the
   working group's developing technology, and decided to ignore the
   claims.  This was reflected in the direction the group as a whole
   decided to take.

   In another case, patent claims were asserted that appeared to be
   derived from WG discussion and impact, rather than vice versa (or
   independent discovery).  The claimants were known to be following the
   WG's work when the ideas were proposed, and their patent filing was
   considerably subsequent to that time.

   In 2000 the IDN working group discovered a patent that some
   participants thought might apply to one of their main drafts.  If it
   did, it could affect their work profoundly -- to the extent that some
   suggested that if they could not work out reasonable licensing terms
   with the IPR holder they might just disband.  As a group and
   individually, participants corresponded with IPR holder in order to
   get an explicit statement of licensing terms, preferably royalty-
   free.  By doing so they gained a better understanding of just which
   WG activities were seen as infringing on the patent, and at least
   some understanding of the IPR holder's intentions and philosophy.
   Since the patent holder seemed to have an interest in using the
   patent for profit, the group discussed the issues on its mailing
   list.  They overtly talked about how they could change their proposed
   technology to avoid having to contest the patent, and the extent to
   which the patent might be countered by claims of prior art.
   Meanwhile, individually they were talking to their legal advisors.
   Gradually, a collective opinion formed that the working group
   documents did not infringe on the patent.  Since then, the patent has
   been ignored.  However, they are keeping a watchful eye out for
   continuation patents which might have already been submitted.

   Lessons:

   o  It's sometimes beneficial to push IPR claimants to find out what
      they think their claims cover and what their licensing terms are.

   o  Possibilities of prior art should be considered.

   o  It's all right, and sometimes beneficial, to discuss IPR claims
      and gather information about possible prior art on the group list
      (but remember that neither the IETF nor any working group takes a
      stand on such claims as a body, and the group is not the best
      place to get legal advice).




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   o


5. General Principles

   Given the case studies above, here are a few principles that working
   groups can start with in dealing with IPR.  Of course every working
   group needs to follow its own consensus, and actual treatments will
   vary as much as they have in the past.

5.1 Types of IPR

   A primer on the different types of IPR would be large, unreliable,
   and redundant with other Working Group documents [2][5][6].  For
   informal exploration, see those documents and other relevant sources
   on the web.  Readers with more serious concerns should consult their
   legal advisors.  In the United States, briefly:

   o  Trademarks indicate the sources of goods.  Servicemarks indicate
      the sources of services.  They protect the use of particular marks
      or similar marks.

   o  Copyrights protect the expressions of ideas (not the ideas
      themselves), in almost any form, and allow "fair use".  Copyrights
      expire but they can be renewed.

   o  Patents protect "inventions".  They expire (utility patents expire
      after 20 years), but follow-on patents can cover similar
      technologies and can have nearly the same implications for use in
      the Internet as the original patents.


5.2 When to think about IPR

   This memo does not describe IPR procedures for document authors or
   IPR asserters.  Rather, this memo is for working groups that are
   trying to decide what to do about IPR-protected technology
   contributions.  A working group as a whole (as opposed to individual
   contributors or IPR holders) needs to think about IPR issues:

   o  when examining a technology, and deciding whether to initiate work
      on it.

   o  when deciding whether to adopt a draft as a working group
      document.

   o  when choosing between two or more working group drafts that use
      different technologies.



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   o  when deciding whether to depend on a technology developed outside
      the working group.

   o  when comparing different kinds of IPR protection.

   At each of these times, the working group should solicit disclosure
   of IPR assertions and licensing terms.  A working group's job will be
   a lot easier if IPR details are discovered early, but it should
   realize that IPR assertions may appear at any time.  An IPR holder
   which does not participate in the IETF may choose to wait, while the
   relevant technology is being discussed and evaluated, perhaps
   modifying its claims during this time.

5.3 IPR as a Technology Evaluation Factor

   How do you weigh IPR assertions against other issues when deciding
   whether to adopt a technology?

   The ultimate goal of the IETF is to promote the overall health,
   robustness, flexibility and utility of the Internet infrastructure.
   We base architectural decisions on our long-term extrapolations of
   requirements, by thinking in these terms.  When considering a
   particular technology, we compare it with other technologies not just
   for its elegance of design in and of itself, but also for how it fits
   in the bigger picture.  This is done at multiple levels.  It is
   examined for how it fits into the overall design of the working
   group's output, how it fits into the particular Internet
   infrastructure area, how it fits with work going on in other areas,
   and how it fits in the long view of the Internet architecture.

   Similarly, when evaluating a technology, working group participants
   consider IPR claims on it (including possible copyright issues with
   text describing it).  The issue is not whether a particular piece of
   technology is IPR-protected -- we use IPR-protected technology every
   minute.  The question is how much the IPR protection will limit the
   technology's usefulness in building a robust, highly useful Internet.
   Thus, the only significant questions are: is the IPR claim relevant,
   and if so what are the terms under which the technology can be used?
   When technology is free from IPR protection the answer is easy.  When
   it is IPR-protected, some terms make the IPR issues insignificant
   compared to the engineering issues.  Other terms can make a
   technology unusable even if it is perfect otherwise.

   The problem with IPR as a technology evaluation factor is that it is
   unlikely that a working group, as an entity, can ever claim to have
   reached consensus on most IPR issues.  The IETF as a whole, and a
   working group as a whole, takes no stance on the validity of any IPR
   claim.  It would be inappropriate for a working group chair to



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   declare that consensus had been reached that, for example, a
   company's patent was invalid.  Individual participants will need to
   use whatever legal advice resources they have access to to form their
   own individual opinions, but discussions about the validity of IPR
   should not take place under the auspices of the working group.

5.4 Patents versus Pending Patents

   The IETF does not (cannot) expect IPR asserters to tell a working
   group specifically how they think a particular patent applies.  If a
   patent has already been granted, the IETF can reasonably expect
   disclosure of the patent number, which will allow working group
   participants to explore details of the claims.  If a patent has not
   yet been granted, significantly less information is available.  In
   most countries patent applications are published 18 months after they
   are filed, but in the USA that can be avoided if the applicant does
   not also file outside the USA.  Details of pending patent claims can
   be modified at any time by the claim submitter before the patent is
   granted.  It is not known before then what rights will actually be
   granted.  Finally, rights can be contested in court, and nothing is
   final until the courts decide.  All the IETF can expect regarding a
   pending patent is disclosure that it exists and possibly some
   statement about licensing terms.

5.5 Applicability: It's Hard to Prove a Negative

   Working group participants need to make their own decisions about
   what level of confidence they need as to whether IPR is applicable.
   However, perfect knowledge is not a worthwhile goal.

   In general, a working group should strive to find out about all IPR
   claims related to technologies it is considering, and at least the
   general facts about licensing terms for each case -- for example
   whether the terms will be "reasonable and non-discriminatory".
   Working group participants should also investigate possibilities of
   prior art which would counter the IPR claims.  However, even if the
   working group participants do exhaustive searches, both externally
   and internally to their employers, it is impossible to prove that a
   particular technology is not covered by a particular IPR claim, let
   alone proving that it is not covered by any IPR claim.  Anything a
   working group adopts may, in the future, turn out to be IPR-
   protected, although the IPR assertion may not be discovered until
   years later.  Claims are open to interpretation even after rights are
   granted.  Drafts can be very fluid, even up to the time of last call,
   and IPR issues may unknowingly be taken on at any time.  Absolute
   certainty about IPR claims is extremely rare.

   However, the level of confidence needed to consider IPR when



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   evaluating a technology is often not hard to get to.  There are cases
   where risk is high (e.g.  where licensing terms may be onerous) and
   thus a high level of confidence about applicability is needed, but
   history shows that most of the time "rough" confidence is good
   enough.  In any case, perfect confidence is usually impossible.

5.6 No Universal License Terms

   Licensing terms vary continuously across a range from prohibitive to
   no license at all.  In general there are four classes of situation
   which will be encountered.

   o  No license - licenses per se are not available.  Local
      regulations, if any, apply.

   o  Public domain - the technology is explicitly made available to
      all, without any IPR claims.

   o  General "free" license - the technology is made available free of
      charge.  There may be terms which specify conditions for use of
      the technology, for example regarding redistribution.  There is a
      form of this license which invokes "reciprocity", in which the
      technology may be used as long as the licensee allows the IPR
      holder to use the licensee's technology in the same area under
      comparable terms.  A requirement for general reciprocity is also
      possible, under which the technology is made available as long as
      the licensee does not enforce any IPR claims against the licenser.

   o  "Reasonable and non-discriminatory" (RAND) terms - the license is
      granted based on some terms which may include reciprocity.  The
      terms can vary tremendously.  Even when IPR assertions do use
      words such as "reasonable", "fair", and "non-discriminatory",
      working groups should keep in mind that these words have no
      objective legal definition, at least not in this context.

   Many IPR holders do not like to publish explicit, specific terms
   under which they will issue licenses.  They may use standard terms
   for many licensees, but they prefer to negotiate terms for some.
   Therefore, do not expect any IPR claim to lay out detailed blanket
   terms for licensing.

   Vaguer terms are not necessarily better or worse than more specific
   terms.  If an IPR assertion lists only vague terms, that doesn't mean
   the terms that will be offered in individual licenses will be any
   worse than those offered in an IPR assertion that makes very specific
   statements.  Obviously, if an IPR claimant refuses to suggest any
   terms at all, the working group is going to have trouble evaluating
   the future utility of the technology.



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   Recall that words such as "reasonable", "fair", and "non-
   discriminatory" have no objective legal or financial definition.
   Also, IPR holders have occasionally asserted that there were already
   sufficient licenses for a particular technology to meet "reasonable"
   multisource and competitiveness requirements and, hence, that
   refusing to grant any licenses to new applicants was both fair and
   nondiscriminatory.  The best way to find out what an IPR holder
   really means by those terms is to ask, explicitly.  It also helps to
   gather knowledge about licenses actually issued, for that technology
   or for others, and about other experiences with the IPR holder.

   Despite the fact that IPR holders often don't like to publish
   explicit terms, there are levels of vagueness, and individuals and
   even working groups can sometimes successfully push an IPR holder
   toward less vagueness.  The employers of IETF participants all know
   that that IETF prefers explicit terms, and do feel pressure to
   produce them.

   If working group participants are dissatisfied with the confidence
   level they can obtain directly about licensing terms for a particular
   technology, they can possibly extrapolate from history.  As part of
   the standards process as described in RFC2026 [2], in order for
   licensed technology to become a draft standard, at least two
   independent licenses need to have been issued.  If the IPR holder for
   the technology the working group is considering has licensed other
   technology in the past, there is a record of the sorts of terms they
   are willing to grant, at least in those two specific cases.  This
   sort of thing is weak but if everything counts, it may be some
   indication.

6. Security Considerations

   This memo relates to IETF process, not any particular technology.
   There are security considerations when adopting any technology,
   whether IPR-protected or not.  A working group should take those
   security considerations into account as one part of evaluating the
   technology, just as IPR is one part, but they are not issues of
   security with IPR procedures.

   There may be security issues with procedures for dealing with IPR,
   but they are not technical.  They have more to do with
   unintentionally revealing corporate intellectual property through
   human activity than risking anything when using a protocol.

References (Non-Normative)

   [1]  IETF, "IPR Working Group web page", 2002, <http://www.ietf.org/
        html.charters/ipr-charter.html>.



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   [2]  Bradner, S., "The Internet Standards Process -- Revision 3", BCP
        9, RFC 2026, October 1996.

   [3]  Bradner, S., "Key words for use in RFCs to Indicate Requirement
        Levels", BCP 14, RFC 2119, March 1997.

   [4]  Wu, T., "The SRP Authentication and Key Exchange System", RFC
        2945, September 2000.

   [5]  Bradner, S., "Intellectual Property Rights in IETF Technology",
        draft-bradner-ipr-technology-00 (work in progress), July 2002.

   [6]  Bradner, S., "IETF Rights in Submissions", draft-bradner-
        submission-rights-00 (work in progress), June 2002.


Author's Address

   Scott Brim
   Cisco Systems, Inc.
   146 Honness Lane
   Ithaca, NY  14850
   USA

   EMail: sbrim@cisco.com


























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Internet-Draft             WG IPR Guidelines                October 2002


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