draft-ietf-ipr-wg-guidelines-00.txt   draft-ietf-ipr-wg-guidelines-01.txt 
IPR S. Brim IPR Working Group S. Brim
Internet-Draft Cisco Systems, Inc. Internet-Draft Cisco Systems, Inc.
Expires: April 25, 2003 October 25, 2002 Expires: August 19, 2003 February 18, 2003
Guidelines for Working Groups on Intellectual Property Issues Guidelines for Working Groups on Intellectual Property Issues
draft-ietf-ipr-wg-guidelines-00 draft-ietf-ipr-wg-guidelines-01
Status of this Memo Status of this Memo
This document is an Internet-Draft and is in full conformance with This document is an Internet-Draft and is in full conformance with
all provisions of Section 10 of RFC2026. all provisions of Section 10 of RFC2026.
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This Internet-Draft will expire on April 25, 2003. This Internet-Draft will expire on August 19, 2003.
Copyright Notice Copyright Notice
Copyright (C) The Internet Society (2002). All Rights Reserved. Copyright (C) The Internet Society (2003). All Rights Reserved.
Abstract Abstract
This memo lays out a conceptual framework and rules of thumb useful This memo lays out a conceptual framework and rules of thumb useful
for working groups dealing with IPR issues. It documents specific for working groups dealing with IPR issues. It documents specific
examples of how IPR issues have been dealt with in the IETF. examples of how IPR issues have been dealt with in the IETF.
Table of Contents Table of Contents
1. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . 3 1. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . 3
2. The Problem . . . . . . . . . . . . . . . . . . . . . . . . . 3 2. The Problem . . . . . . . . . . . . . . . . . . . . . . . . . 3
3. The Approach . . . . . . . . . . . . . . . . . . . . . . . . . 4 3. The Approach . . . . . . . . . . . . . . . . . . . . . . . . . 4
4. Case Studies . . . . . . . . . . . . . . . . . . . . . . . . . 5 4. Case Studies . . . . . . . . . . . . . . . . . . . . . . . . . 5
4.1 IPS WG (IP Storage) . . . . . . . . . . . . . . . . . . . . . 5 4.1 IPS WG (IP Storage) . . . . . . . . . . . . . . . . . . . . . 5
4.2 PEM and PKI issues . . . . . . . . . . . . . . . . . . . . . . 5 4.2 PEM and PKI issues . . . . . . . . . . . . . . . . . . . . . . 5
4.3 CDI WG (Content Distribution Internetworking) . . . . . . . . 6 4.3 CDI WG (Content Distribution Internetworking) . . . . . . . . 6
4.4 VRRP (Virtual Router Redundancy Protocol) . . . . . . . . . . 7 4.4 VRRP (Virtual Router Redundancy Protocol) . . . . . . . . . . 6
4.5 Secure Shell (SecSH) . . . . . . . . . . . . . . . . . . . . . 7 4.5 Secure Shell (SecSH) . . . . . . . . . . . . . . . . . . . . . 7
4.6 IDN (Internationalized Domain Name) . . . . . . . . . . . . . 7 4.6 IDN (Internationalized Domain Name) . . . . . . . . . . . . . 7
5. General Principles . . . . . . . . . . . . . . . . . . . . . . 9 5. General Principles . . . . . . . . . . . . . . . . . . . . . . 9
5.1 Types of IPR . . . . . . . . . . . . . . . . . . . . . . . . . 9 5.1 Types of IPR . . . . . . . . . . . . . . . . . . . . . . . . . 9
5.2 When to think about IPR . . . . . . . . . . . . . . . . . . . 9 5.2 When to think about IPR . . . . . . . . . . . . . . . . . . . 9
5.3 IPR as a Technology Evaluation Factor . . . . . . . . . . . . 10 5.3 IPR as a Technology Evaluation Factor . . . . . . . . . . . . 10
5.4 Patents versus Pending Patents . . . . . . . . . . . . . . . . 11 5.4 Patents versus Pending Patents Applied For . . . . . . . . . . 11
5.5 Applicability: It's Hard to Prove a Negative . . . . . . . . . 11 5.5 Applicability: It's Hard to Prove a Negative . . . . . . . . . 11
5.6 No Universal License Terms . . . . . . . . . . . . . . . . . . 12 5.6 No Universal License Terms . . . . . . . . . . . . . . . . . . 12
6. Security Considerations . . . . . . . . . . . . . . . . . . . 13 5.7 Third Party Disclosure . . . . . . . . . . . . . . . . . . . . 13
References (Non-Normative) . . . . . . . . . . . . . . . . . . 13 6. Security Considerations . . . . . . . . . . . . . . . . . . . 14
Author's Address . . . . . . . . . . . . . . . . . . . . . . . 14 Informative References . . . . . . . . . . . . . . . . . . . . 15
Full Copyright Statement . . . . . . . . . . . . . . . . . . . 15 Author's Address . . . . . . . . . . . . . . . . . . . . . . . 15
Intellectual Property and Copyright Statements . . . . . . . . 16
1. Introduction 1. Introduction
This memo lays out a conceptual framework and rules of thumb for This memo lays out a conceptual framework and rules of thumb for
working groups dealing with IPR issues. The goal is to achieve a working groups dealing with IPR issues. The goal is to achieve a
balance between the needs of IPR holders and the implementers of the balance between the needs of IPR claimants and the implementers of
Internet which is appropriate to current times. As part of trying to the Internet which is appropriate to current times. As part of
distill out principles for dealing with IPR in IETF working groups, trying to distill out principles for dealing with IPR in IETF working
it provides case studies of treatments of IPR issues that have groups, it provides case studies of treatments of IPR issues that
already been worked out. In other words, it documents the running have already been worked out. In other words, it documents the
code of the IETF process. running code of the IETF process.
This memo does not describe IPR procedures for document authors or This memo does not describe IPR procedures for document authors or
IPR asserters. Those are covered in two other memos coming out of IPR claimants. Those are covered in two other memos, on IPR in the
the IPR working group, on IPR in the IETF [5] and submitters' rights IETF [5] and submitters' rights [6]. Rather, this memo is for working
[6]. Rather, this memo is for working groups that are trying to groups that are trying to decide what to do about IPR-protected
decide what to do about IPR-protected technology contributions. technology contributions.
2. The Problem 2. The Problem
Traditionally the IETF has tried to avoid technologies which were Traditionally the IETF has tried to avoid technologies which were
"protected" through IPR assertions. However, compromises have been "protected" through IPR claims. However, compromises have been made
made since before the IETF was born. The "common knowledge" of the since before the IETF was born. The "common knowledge" of the IETF,
IETF, that IPR-protected technology was anathema, has never dealt that IPR-protected technology was anathema, has never dealt with the
with the fact that the Internet has run on IPR-protected technologies fact that the Internet has run on IPR-protected technologies from the
from the beginning. Nowadays the majority of the useful technologies beginning. Nowadays the majority of the useful technologies brought
brought to the IETF have some sort of IPR assertion associated with to the IETF have some sort of IPR claim associated with them.
them.
It will always be better for the Internet to develop standards based It will always be better for the Internet to develop standards based
on technology which can be used without concern about selective or on technology which can be used without concern about selective or
costly licensing. However, increasingly, choosing a technology which costly licensing. However, increasingly, choosing a technology which
is not protected by IPR over an alternative that is may produce a is not protected by IPR over an alternative that is may produce a
weaker Internet. Sometimes there simply isn't any technology in an 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 area that is not IPR-protected. It is not always the wrong choice to
select IPR-protected technology, if the choice is made knowingly, select IPR-protected technology, if the choice is made knowingly,
after considering the alternatives and taking the IPR issues into after considering the alternatives and taking the IPR issues into
account. account.
The IETF is not a membership organization. Other standards making The IETF is not a membership organization. Other standards making
bodies may have membership agreements that member organizations must bodies may have membership agreements that member organizations must
sign and adhere to in order to participate. Membership agreements sign and adhere to in order to participate. Membership agreements
may include strict procedures for dealing with IPR, or perhaps a may include strict procedures for dealing with IPR, or perhaps a
requirement that technology must be licensed royalty-free. This is requirement that technology must be licensed royalty-free. This is
not possible in the IETF. currently not possible in the IETF.
Even if the IETF had membership agreements, they would be difficult Even if the IETF had membership agreements, they would be difficult
to formulate in a way that covered IPR problems, because the IETF's to formulate in a way that covered IPR problems, because the IETF's
work includes technology from other sources and because the IETF work includes technology from other sources and because the IETF
collaborates with organizations that work with different approaches collaborates with organizations that work with different approaches
to intellectual property. The IETF can encounter four different IPR to intellectual property. The IETF can encounter four different IPR
situations, at almost any time during the life of a document: situations, at almost any time during the life of a document:
o A draft submitter notes its IPR claim regarding the contents of o A document submitter notes its IPR claim regarding the contents of
the draft. the document.
o An IETF participant asserts that the contents of a draft is o An IETF participant claims that the contents of a document are
covered by their own IPR. covered by their own IPR.
o IPR is noted, by the author of a draft or by a different IETF o IPR is noted, by the author of a document or by a different IETF
participant, that is claimed by an organization that does not participant, that is claimed by an organization that does not
participate in the IETF at all. participate in the IETF at all.
o An organization that does not participate in the IETF, but that o An organization that does not participate in the IETF, but that
monitors its activities, discovers that a draft intersects that monitors its activities, discovers that a document intersects that
organization's established or pending intellectual property organization's established or pending intellectual property
claims. It may come forward right away, or wait and let the IETF claims. It may come forward right away, or wait and let the IETF
work progress. work progress.
The IETF does not have detailed rules for each situation. The IETF The IETF does not have detailed rules for each situation. Working
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 groups have essentially only one rule they can invoke -- about
individuals not participating in activities related to a technology individuals not participating in activities related to a technology
if they do not disclose known IPR. Other than that a working group if they do not disclose known IPR. Other than that a working group
only has recommendations and requests. only has recommendations and requests.
Since every case is unique, and there are close to no general rules, 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 working groups need a great deal of freedom in dealing with IPR
issues. However, some amount of consistency is important so that issues. However, some amount of consistency is important so that
both contributors and users of eventual standards can know what to both contributors and users of eventual standards can know what to
expect. expect.
3. The Approach 3. The Approach
The organizing principle of this memo is to give working groups as The goal of this memo is not to make rules. It is to give working
much information as possible to make informed decisions, and then groups as much information as possible to make informed decisions,
step out of the way. The other IPR working group memos (see the IPR and then step out of the way. The other IPR working group memos (see
Working Group charter page [1]) lay out what needs to be done once a the IPR Working Group charter page [1]) lay out what needs to be done
particular piece of technology is selected as a working group draft. once a particular piece of technology is selected as a working group
That doesn't help when a working group is trying to decide whether to draft. That doesn't help when a working group is trying to decide
select a technology or not in the first place. Thus this third memo. whether to select a technology or not in the first place. Thus this
We want to build a conceptual framework, a new set of "common third memo. We want to build a conceptual framework, a new set of
knowledge", to make it easier for working groups to deal with "common knowledge", to make it easier for working groups to deal with
intellectual property issues. intellectual property issues.
To do so, we first present "case studies" in Section 4 -- real events To do so, we first present "case studies" in Section 4 -- real events
that have happened in recent years, and how different working groups that have happened in recent years, and how different working groups
dealt with them -- plus notes on possible lessons to be learned. In 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 Section 5, we expand on these lessons and try to extract general
extract general principles. principles.
4. Case Studies 4. Case Studies
The best way to know what works is to look at past attempts at The best way to know what works in dealing with IPR is to look at
dealing with IPR. The following are selected as cases from which past attempts to do so. The following are selected as cases from
general lessons might be extracted. which general lessons might be extracted. Other lessons might be
extracted from other cases, but the cases below cover all of the
important ones.
4.1 IPS WG (IP Storage) 4.1 IPS WG (IP Storage)
The IPS Working Group evaluated technology developed outside of the The IPS Working Group evaluated technology developed outside of the
working group, "secure remote password" (SRP, RFC2945 [4]). At the working group, "secure remote password" (SRP, RFC2945 [4]). At the
time, there was one known IPR assertion, and the proposed licensing time, there was one known IPR claim, and the proposed licensing terms
terms were apparently reasonable. SRP had become a proposed standard were apparently reasonable. SRP had become a proposed standard
without going through any working group, so IETF participants may without going through any working group, so IETF participants may
have been less likely to notice it in order to make statements about 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 IPR. In any case, two more possible IPR claims were uncovered after
the IPS working group had already decided to make SRP required. One the IPS working group had already decided to make SRP required. One
of the possible IPR holders did not make a strong IPR assertion of the possible IPR claimants did not make a strong IPR claim itself,
itself, and did not want to take the time to determine whether it and did not want to take the time to determine whether it actually
actually had a claim, though it acknowledged it might have a claim. had a claim, though it acknowledged it might have a claim. In both
Also, in both cases it was difficult to obtain information on cases it was difficult to obtain concrete information on possible
possible licensing terms, even though words like reasonable and non- licensing terms, even though words like "reasonable" and
discriminatory were used in IPR statements, and rumors of what they "non-discriminatory" were used in the IPR statements. Rumors of what
might be did like not sound good. The working group participants they might be like did not sound good. The working group
took the assertions, potential and otherwise, very seriously, and participants took the claims, potential and otherwise, very
decided not to use SRP after all, even though they had already chosen seriously, and decided not to use SRP after all, even though they had
it based on other criteria. already chosen it based on other criteria.
Lessons: Lessons:
o IPR assertions may appear at any time in the standards process. o IPR claims may appear at any time in the standards process.
o Take impreciseness seriously. Attempt to get clarification on o Take impreciseness seriously. Attempt to get clarification on
both IPR claims and licensing terms. both IPR claims and licensing terms.
4.2 PEM and PKI issues 4.2 PEM and PKI issues
PEM (Privacy-Enhanced Mail) wanted to use public key technology. In PEM (Privacy-Enhanced Mail) wanted to use public key technology. In
the mid-90s, the basic principles of public key infrastructure had the mid-90s, the basic principles of public key infrastructure had
been patented for years. The patent holder had shown a tendency to been patented for years. The patent holder had shown a tendency to
actively enforce its rights, and to prefer software sales to actively enforce its rights, and to prefer software sales to
skipping to change at page 6, line 4 skipping to change at page 5, line 50
both IPR claims and licensing terms. both IPR claims and licensing terms.
4.2 PEM and PKI issues 4.2 PEM and PKI issues
PEM (Privacy-Enhanced Mail) wanted to use public key technology. In PEM (Privacy-Enhanced Mail) wanted to use public key technology. In
the mid-90s, the basic principles of public key infrastructure had the mid-90s, the basic principles of public key infrastructure had
been patented for years. The patent holder had shown a tendency to been patented for years. The patent holder had shown a tendency to
actively enforce its rights, and to prefer software sales to actively enforce its rights, and to prefer software sales to
licensing. This was seen as a significant potential issue, one which licensing. This was seen as a significant potential issue, one which
could possibly interfere with the easy development of the Internet. could possibly interfere with the easy development of the Internet.
However, there was no alternative technology that came close to its However, there was no alternative technology that came close to its
capabilities. Adopting an alternative would have damaged the capabilities. Adopting an alternative would have damaged the
Internet's health and flexibility even more than adopting a Internet's health and flexibility even more than adopting a
technology with IPR assertions. The case was so compelling that the technology with IPR claims. The case was so compelling that the
working group participants decided to move forward on standardizing working group participants decided to move forward on standardizing
it and even requiring it. it and even requiring it.
One factor which was noted was that the patents were mature, and One factor which was noted was that the patents were mature, and
would expire within a few years. That meant that although the impact 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. might be significant to start with, it would not be in the long run.
This lowered the perceived risk of using the IPR-protected This lowered the perceived risk of using the IPR-protected
technology. technology.
Lessons: Lessons:
skipping to change at page 6, line 34 skipping to change at page 6, line 32
o The IPR's lifecycle phase can be a consideration. o The IPR's lifecycle phase can be a consideration.
4.3 CDI WG (Content Distribution Internetworking) 4.3 CDI WG (Content Distribution Internetworking)
The CDI Working Group laid out an overall architecture and found that The CDI Working Group laid out an overall architecture and found that
a number of included technologies had IPR claims associated with a number of included technologies had IPR claims associated with
them, based on work done before the working group was started. The them, based on work done before the working group was started. The
working group participants decided there was little chance of working group participants decided there was little chance of
producing alternative technologies which were as useful and which did producing alternative technologies which were as useful and which did
not run up against these IPR assertions. As usual, there was no good not run up against these IPR claims. As usual, there was no good way
way to evaluate assertions and possible licensing terms until after to evaluate claims and possible licensing terms until after the
the technology had been completely specified (at the earliest). technology had been completely specified (at the earliest).
Working group participants generally thought they had a good idea Working group participants generally thought they had a good idea
what to expect from each other, and that the ultimate benefits of what to expect from each other, and that the ultimate benefits of
using the technologies outweighed the IPR issues. The working group using the technologies outweighed the IPR issues. The working group
participants decided not to consider IPR as an issue at all in participants decided not to consider IPR as an issue at all in
determining which technologies to adopt. determining which technologies to adopt.
Lessons: Lessons:
o Past experience can be used as a significant factor in evaluating o Past experience can be used as a significant factor in evaluating
the possible impact of IPR. the possible impact of IPR.
4.4 VRRP (Virtual Router Redundancy Protocol) 4.4 VRRP (Virtual Router Redundancy Protocol)
The working group was standardizing VRRP based on a protocol The working group was standardizing VRRP based on a protocol
developed outside the IETF. The IPR holder supported that protocol developed outside the IETF. The IPR claimant supported that protocol
and stated that it would license its IPR for that protocol if it and stated that it would license its IPR for that protocol if it
became the standard, but not for the similar protocol the working became the standard, but not for the similar protocol the working
group was developing. The working group participants decided to go group was developing. The working group participants decided to go
ahead and standardize its protocol anyway. The IPR holder has only ahead and standardize its protocol anyway. The IPR claimant has only
asserted its patent when someone else asserted a patent against it. claimed its patent when someone else claimed a patent against it.
There is no evidence that the working group participants actually There is no evidence that the working group participants actually
thought about the implications of the IPR when it went ahead with its thought about the implications of the IPR when it went ahead with its
choice of protocol. choice of protocol.
Lessons: Lessons:
o IPR assertions should never be disregarded without good cause. o IPR claims should never be disregarded without good cause. Due
Due diligence should be done to understand the consequences of diligence should be done to understand the consequences of each
each assertion. claim.
4.5 Secure Shell (SecSH) 4.5 Secure Shell (SecSH)
This was primarily a trademark issue, not a patent issue, since the 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 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 a trademark wanted the IETF to stop using "SSH" in the names and
of its proposed standards. The working group participants thought bodies of its proposed standards. The working group participants
through the details of the claims, and possible implications and thought through the details of the claims, and possible implications
risks, and decided to go ahead and continue using the names as they and risks, and decided to go ahead and continue using the names as
are now. This issue is still being worked through. they are now. This issue is still being worked through.
Lessons: Lessons:
o Working group participants can evaluate IPR assertions not only o Working group participants can evaluate IPR claims not only for
for their possible validity, but also for the risk of misjudging their possible validity, but also for the risk of misjudging that
that validity. The impact of honoring the IPR claim may be major validity. The impact of honoring the IPR claim may be major or
or minor. minor.
4.6 IDN (Internationalized Domain Name) 4.6 IDN (Internationalized Domain Name)
The IDN working group dealt with a number of IPR assertions. Several The IDN working group dealt with a number of IPR claims. Several were
were made which did not overlap with the technology -- the IPR made which did not overlap with the technology -- the IPR claimants
asserters said the patents were being announced just in case the said the patents were being announced just in case the working group
working group decided to go that way. In one case, even though a decided to go that way. In one case, even though a patent was
patent was announced as purely defensive, the working group announced as purely defensive, the working group participants
participants investigated the claims themselves. They concluded that investigated the claims themselves. They concluded that it did not
it did not overlap. overlap.
In one case, an IPR claimer asserted that the working group's 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 documents, and in fact the IETF as a whole, were infringing on its
rights. Individual working group participants consulted with their rights. Individual working group participants consulted with their
legal advisers, concluded that the claims would not overlap the legal advisers, concluded that the claims would not overlap the
working group's developing technology, and decided to ignore the working group's developing technology, and decided to ignore the
claims. This was reflected in the direction the group as a whole claims. This was reflected in the direction the group as a whole
decided to take. decided to take.
In another case, patent claims were asserted that appeared to be In another case, patent claims were asserted that appeared to be
derived from WG discussion and impact, rather than vice versa (or derived from WG discussion and impact, rather than vice versa (or
independent discovery). The claimants were known to be following the independent discovery). The claimants were known to be following the
WG's work when the ideas were proposed, and their patent filing was WG's work when the ideas were proposed, and their patent filing was
considerably subsequent to that time. considerably subsequent to that time.
In 2000 the IDN working group discovered a patent that some In 2000 the IDN working group discovered a patent that some
participants thought might apply to one of their main drafts. If it participants thought might apply to one of their main drafts. If it
did, it could affect their work profoundly -- to the extent that some did, it could affect their work profoundly -- to the extent that some
suggested that if they could not work out reasonable licensing terms suggested that if they could not work out reasonable licensing terms
with the IPR holder they might just disband. As a group and with the IPR claimant they might just disband. As a group and
individually, participants corresponded with IPR holder in order to individually, participants corresponded with IPR claimant in order to
get an explicit statement of licensing terms, preferably royalty- get an explicit statement of licensing terms, preferably
free. By doing so they gained a better understanding of just which royalty-free. By doing so they gained a better understanding of just
WG activities were seen as infringing on the patent, and at least which WG activities were seen as infringing on the patent, and at
some understanding of the IPR holder's intentions and philosophy. least some understanding of the IPR claimant's intentions and
Since the patent holder seemed to have an interest in using the philosophy. Since the patent holder seemed to have an interest in
patent for profit, the group discussed the issues on its mailing using the patent for profit, the group discussed the issues on its
list. They overtly talked about how they could change their proposed mailing list. They overtly talked about how they could change their
technology to avoid having to contest the patent, and the extent to proposed technology to avoid having to contest the patent, and the
which the patent might be countered by claims of prior art. extent to which the patent might be countered by claims of prior art.
Meanwhile, individually they were talking to their legal advisors. Meanwhile, individually they were talking to their legal advisors.
Gradually, a collective opinion formed that the working group Gradually, a collective opinion formed that the working group
documents did not infringe on the patent. Since then, the patent has documents did not infringe on the patent. Since then, the patent has
been ignored. However, they are keeping a watchful eye out for been ignored. However, they are keeping a watchful eye out for
continuation patents which might have already been submitted. continuation patents which might have already been submitted.
Lessons: Lessons:
o It's sometimes beneficial to push IPR claimants to find out what o It's sometimes beneficial to push IPR claimants to find out what
they think their claims cover and what their licensing terms are. they think their claims cover and what their licensing terms are.
o Possibilities of prior art should be considered. o Possibilities of prior art should be considered.
o It's all right, and sometimes beneficial, to discuss IPR claims o It's all right, and sometimes beneficial, to discuss IPR claims
and gather information about possible prior art on the group list and gather information about possible prior art on the group list.
(but remember that neither the IETF nor any working group takes a The results of such discussion can be considered when deciding
stand on such claims as a body, and the group is not the best whether to develop a technology (but remember that neither the
place to get legal advice). 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).
o
5. General Principles 5. General Principles
Given the case studies above, here are a few principles that working Given the case studies above, here are a few principles that working
groups can start with in dealing with IPR. Of course every working groups can start with in dealing with IPR. Of course every working
group needs to follow its own consensus, and actual treatments will group needs to follow its own consensus, and actual treatments will
vary as much as they have in the past. vary as much as they have in the past. However, every working group
also needs to take IPR seriously, and follow these general
principles.
5.1 Types of IPR 5.1 Types of IPR
A primer on the different types of IPR would be large, unreliable, A primer on the different types of IPR would be large, unreliable,
and redundant with other Working Group documents [2][5][6]. For and redundant with other Working Group documents [2][5][6]. For
informal exploration, see those documents and other relevant sources informal exploration, see those documents and other relevant sources
on the web. Readers with more serious concerns should consult their on the web. Readers with more serious concerns should consult their
legal advisors. In the United States, briefly: legal advisors. In the United States, briefly:
o Trademarks indicate the sources of goods. Servicemarks indicate o Trademarks indicate the sources of goods. Servicemarks indicate
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expire but they can be renewed. expire but they can be renewed.
o Patents protect "inventions". They expire (utility patents expire o Patents protect "inventions". They expire (utility patents expire
after 20 years), but follow-on patents can cover similar after 20 years), but follow-on patents can cover similar
technologies and can have nearly the same implications for use in technologies and can have nearly the same implications for use in
the Internet as the original patents. the Internet as the original patents.
5.2 When to think about IPR 5.2 When to think about IPR
This memo does not describe IPR procedures for document authors or This memo does not describe IPR procedures for document authors or
IPR asserters. Rather, this memo is for working groups that are IPR claimants. Rather, this memo is for working groups that are
trying to decide what to do about IPR-protected technology trying to decide what to do about IPR claims related to their work.
contributions. A working group as a whole (as opposed to individual A working group as a whole needs to think about IPR issues:
contributors or IPR holders) needs to think about IPR issues:
o when examining a technology, and deciding whether to initiate work o when examining a technology, and deciding whether to initiate work
on it. on it.
o when deciding whether to adopt a draft as a working group o when deciding whether to adopt a draft as a working group
document. document.
o when choosing between two or more working group drafts that use o when choosing between two or more working group drafts that use
different technologies. different technologies.
o when deciding whether to depend on a technology developed outside o when deciding whether to depend on a technology developed outside
the working group. the working group.
o when comparing different kinds of IPR protection. o when comparing different kinds of IPR protection.
At each of these times, the working group should solicit disclosure At each of these times, the working group should solicit disclosure
of IPR assertions and licensing terms. A working group's job will be of IPR claims and licensing terms. A working group's job will be a
a lot easier if IPR details are discovered early, but it should lot easier if IPR details are discovered early, but it should realize
realize that IPR assertions may appear at any time. An IPR holder that IPR claims may appear at any time. Working groups should
which does not participate in the IETF may choose to wait, while the anticipate that an IPR claimant might choose not to participate in
relevant technology is being discussed and evaluated, perhaps the IETF, but instead to monitor from a distance while the relevant
modifying its claims during this time. technology is being discussed and evaluated. Actual IPR claims may
therefore depend upon when a claimant steps forward during the course
of a WG's deliberations.
5.3 IPR as a Technology Evaluation Factor 5.3 IPR as a Technology Evaluation Factor
How do you weigh IPR assertions against other issues when deciding How do you weigh IPR claims against other issues when deciding
whether to adopt a technology? whether to adopt a technology?
The ultimate goal of the IETF is to promote the overall health, The ultimate goal of the IETF is to promote the overall health,
robustness, flexibility and utility of the Internet infrastructure. robustness, flexibility and utility of the Internet infrastructure.
We base architectural decisions on our long-term extrapolations of We base architectural decisions on our long-term extrapolations of
requirements, by thinking in these terms. When considering a requirements by thinking in these terms. When considering a
particular technology, we compare it with other technologies not just 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 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 in the bigger picture. This is done at multiple levels. It is
examined for how it fits into the overall design of the working examined for how it fits into the overall design of the working
group's output, how it fits into the particular Internet group's output, how it fits into the particular Internet
infrastructure area, how it fits with work going on in other areas, infrastructure area, how it fits with work going on in other areas,
and how it fits in the long view of the Internet architecture. and how it fits in the long view of the Internet architecture.
Similarly, when evaluating a technology, working group participants Similarly, when evaluating a technology, working group participants
consider IPR claims on it (including possible copyright issues with consider IPR claims on it (including possible copyright issues with
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technology unusable even if it is perfect otherwise. technology unusable even if it is perfect otherwise.
The problem with IPR as a technology evaluation factor is that it is 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 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 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 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 claim. It would be inappropriate for a working group chair to
declare that consensus had been reached that, for example, a declare that consensus had been reached that, for example, a
company's patent was invalid. Individual participants will need to company's patent was invalid. Individual participants will need to
use whatever legal advice resources they have access to to form their use whatever legal advice resources they have access to to form their
own individual opinions, but discussions about the validity of IPR own individual opinions. Discussions about the validity of IPR can
should not take place under the auspices of the working group. take place under the auspices of the working group, in particular
about relative risks of technology choices. Individual participants
can take these discussions into account. The working group as a body
may not take a stance on validity, but it may make choices based on
perceived risk.
5.4 Patents versus Pending Patents 5.4 Patents versus Pending Patents Applied For
The IETF does not (cannot) expect IPR asserters to tell a working The IETF does not (cannot) expect IPR claimants to tell a working
group specifically how they think a particular patent applies. If a group specifically how they think a particular patent applies. If a
patent has already been granted, the IETF can reasonably expect patent has already been granted, the IETF can reasonably expect
disclosure of the patent number, which will allow working group disclosure of the patent number, which will allow working group
participants to explore details of the claims. If a patent has not participants to explore details of the claims. If a patent has not
yet been granted, significantly less information is available. In yet been granted (or if knowledge of the patent is restricted, e.g.
most countries patent applications are published 18 months after they for security reasons), significantly less information is available.
are filed, but in the USA that can be avoided if the applicant does In most countries patent applications are published 18 months after
not also file outside the USA. Details of pending patent claims can they are filed, but in the USA that can be avoided if the applicant
be modified at any time by the claim submitter before the patent is does not also file outside the USA. In some countries applications
are a matter of public record, but details of pending 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. It is not known before then what rights will actually be
granted. Finally, rights can be contested in court, and nothing is granted. Finally, rights can be contested in court, and nothing is
final until the courts decide. All the IETF can expect regarding a final until the courts decide. All the IETF can expect regarding a
pending patent is disclosure that it exists and possibly some pending patent is disclosure that it exists and possibly some
statement about licensing terms. statement about licensing terms.
5.5 Applicability: It's Hard to Prove a Negative 5.5 Applicability: It's Hard to Prove a Negative
Working group participants need to make their own decisions about Working group participants must make their own decisions about what
what level of confidence they need as to whether IPR is applicable. level of confidence they need as to whether IPR is applicable.
However, perfect knowledge is not a worthwhile goal. However, perfect knowledge is not a worthwhile goal.
In general, a working group should strive to find out about all IPR In general, a working group should strive to find out about all IPR
claims related to technologies it is considering, and at least the claims related to technologies it is considering, and at least the
general facts about licensing terms for each case -- for example general facts about licensing terms for each case -- for example
whether the terms will be "reasonable and non-discriminatory". whether the terms will be "reasonable and non-discriminatory".
Working group participants should also investigate possibilities of Working group participants should also investigate possibilities of
prior art which would counter the IPR claims. However, even if the prior art which would counter the IPR claims. However, even if the
working group participants do exhaustive searches, both externally working group participants do exhaustive searches, both externally
and internally to their employers, it is impossible to prove that a and internally to their employers, it is impossible to prove that a
particular technology is not covered by a particular IPR claim, let particular technology is not covered by a particular IPR claim, let
alone proving that it is not covered by any IPR claim. Anything a 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- working group adopts may, in the future, turn out to be
protected, although the IPR assertion may not be discovered until IPR-protected, although the IPR claim may not be discovered until
years later. Claims are open to interpretation even after rights are 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, 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 and IPR issues may unknowingly be taken on at any time. Absolute
certainty about IPR claims is extremely rare. certainty about IPR claims is extremely rare.
However, the level of confidence needed to consider IPR when However, the level of confidence needed to consider IPR when
evaluating a technology is often not hard to get to. There are cases 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 where risk is high (e.g. where licensing terms may be onerous) and
thus a high level of confidence about applicability is needed, but thus a high level of confidence about applicability is needed, but
history shows that most of the time "rough" confidence is good history shows that most of the time "rough" confidence is good
enough. In any case, perfect confidence is usually impossible. enough. In any case, perfect confidence is usually impossible.
In all cases, licensing terms are a more significant consideration
than the validity of the IPR claims. Most of the time licensing
terms are reasonable and do not limit the usefulness of the
technology. It is difficult to be sure about the validity of IPR
claims. If the licensing terms can be determined to be reasonable,
then the IPR claims become much less important.
5.6 No Universal License Terms 5.6 No Universal License Terms
Licensing terms vary continuously across a range from prohibitive to Licensing terms vary across a range from prohibitive to no license
no license at all. In general there are four classes of situation required at all. In general there are four classes of situation
which will be encountered. which will be encountered.
o No license - licenses per se are not available. Local o No license - licenses per se are not available. Local regulations,
regulations, if any, apply. if any, apply.
o Public domain - the technology is explicitly made available to o Public domain - the technology is explicitly made available to
all, without any IPR claims. all, without any IPR claims.
o General "free" license - the technology is made available free of o General "free" license - the technology is made available free of
charge. There may be terms which specify conditions for use of charge. There may be terms which specify conditions for use of
the technology, for example regarding redistribution. There is a the technology, for example regarding redistribution. There is a
form of this license which invokes "reciprocity", in which the form of this license which invokes "reciprocity", in which the
technology may be used as long as the licensee allows the IPR technology may be used as long as the licensee allows the IPR
holder to use the licensee's technology in the same area under claimant to use the licensee's technology in the same area under
comparable terms. A requirement for general reciprocity is also comparable terms. A requirement for general reciprocity is also
possible, under which the technology is made available as long as possible, under which the technology is made available as long as
the licensee does not enforce any IPR claims against the licenser. the licensee does not enforce any IPR claims against the licenser.
o "Reasonable and non-discriminatory" (RAND) terms - the license is o "Reasonable and non-discriminatory" (RAND) terms - the license is
granted based on some terms which may include reciprocity. The granted based on some terms which may include reciprocity. The
terms can vary tremendously. Even when IPR assertions do use terms can vary tremendously. Even when IPR claims do use words
words such as "reasonable", "fair", and "non-discriminatory", such as "reasonable", "fair", and "non-discriminatory", working
working groups should keep in mind that these words have no groups should keep in mind that these words have no objective
objective legal definition, at least not in this context. legal definition, at least not in this context.
Many IPR holders do not like to publish explicit, specific terms Many IPR claimants do not like to publish specific terms under which
under which they will issue licenses. They may use standard terms they will issue licenses. They may use standard terms for many
for many licensees, but they prefer to negotiate terms for some. licensees, but they prefer to negotiate terms for some. Therefore,
Therefore, do not expect any IPR claim to lay out detailed blanket do not expect any IPR disclosure statement to lay out detailed
terms for licensing. blanket terms for licensing.
Vaguer terms are not necessarily better or worse than more specific If an IPR disclosure statement lists only vague terms, that doesn't
terms. If an IPR assertion lists only vague terms, that doesn't mean mean the terms that will be offered in individual licenses will be
the terms that will be offered in individual licenses will be any any worse than those offered in an IPR claim that makes very specific
worse than those offered in an IPR assertion that makes very specific
statements. Obviously, if an IPR claimant refuses to suggest any statements. Obviously, if an IPR claimant refuses to suggest any
terms at all, the working group is going to have trouble evaluating terms at all, the working group is going to have trouble evaluating
the future utility of the technology. the future utility of the technology.
Recall that words such as "reasonable", "fair", and "non- Recall that words such as "reasonable", "fair", and
discriminatory" have no objective legal or financial definition. "non-discriminatory" have no objective legal or financial definition.
Also, IPR holders have occasionally asserted that there were already Also, IPR claimants have occasionally asserted that there were
sufficient licenses for a particular technology to meet "reasonable" already sufficient licenses for a particular technology to meet
multisource and competitiveness requirements and, hence, that "reasonable" multisource and competitiveness requirements and, hence,
refusing to grant any licenses to new applicants was both fair and that refusing to grant any licenses to new applicants was both fair
nondiscriminatory. The best way to find out what an IPR holder and nondiscriminatory. The best way to find out what an IPR claimant
really means by those terms is to ask, explicitly. It also helps to really means by those terms is to ask, explicitly. It also helps to
gather knowledge about licenses actually issued, for that technology gather knowledge about licenses actually issued, for that technology
or for others, and about other experiences with the IPR holder. or for others, and about other experiences with the IPR claimant.
Despite the fact that IPR holders often don't like to publish Despite the fact that IPR claimants often don't like to publish
explicit terms, there are levels of vagueness, and individuals and explicit terms, there are levels of vagueness, and individuals and
even working groups can sometimes successfully push an IPR holder even working groups can sometimes successfully push an IPR claimant
toward less vagueness. The employers of IETF participants all know toward less vagueness. The employers of IETF participants all know
that that IETF prefers explicit terms, and do feel pressure to that that IETF prefers explicit terms, and do feel pressure to
produce them. produce them.
If working group participants are dissatisfied with the confidence If working group participants are dissatisfied with the confidence
level they can obtain directly about licensing terms for a particular level they can obtain directly about licensing terms for a particular
technology, they can possibly extrapolate from history. As part of technology, they can possibly extrapolate from history. As part of
the standards process as described in RFC2026 [2], in order for the standards process as described in RFC2026 [2], in order for
licensed technology to become a draft standard, at least two licensed technology to become a draft standard, at least two
independent licenses need to have been issued. If the IPR holder for independent licenses need to have been issued. If the IPR claimant
the technology the working group is considering has licensed other for the technology the working group is considering has licensed
technology in the past, there is a record of the sorts of terms they other technology in the past, there is a record of the sorts of terms
are willing to grant, at least in those two specific cases. This 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 sort of thing is weak but everything counts, and it may be some
indication. indication.
5.7 Third Party Disclosure
Formal procedures for third party disclosures are the same as those
outlined in [5]. However, before those procedures are followed some
preliminary explorations are a good idea. Third party disclosure is
a potential denial of service threat to the working group, and
therefore it is good form to proceed slowly.
In general a potential discloser should exchange mail with the
working group chair(s) first, to open the way for discussion. Also,
if the potential discloser is not sure if the IPR claim applies, this
is the time to reach some kind of agreement with the working group
chairs before saying anything publicly. After discussion with the
working group chairs, they should bring the issue to the attention of
the working group, and to the attention of the IPR claimant if doing
so is not too difficult. Such discussion should help the potential
discloser to become more sure, one way or the other. If they are
sure the discovered IPR claim applies, and the IPR claimant does not
submit a firstparty disclosure itself, then they have a
responsibility to submit a third party disclosure.
Intellectual property often applies to more than one working group.
A person thinking of third party disclosure should consider what
other working groups might be affected, and communicate with them in
the same manner.
Don't bring up IPR issues that are unrelated to the areas where the
WG is focusing at that time. Don't bring claims to the WG's
attention just in case it might go there in a few months, only if it
has implications for current work. Messages to the working group list
should be substantive and a single message should focus on a specific
issue. They can reference multiple claims or patents related to that
issue.
Working group participants should be aware that third party
disclosure can be used, knowingly or unknowingly, to defocus and
distract the working group and hinder its progress. They should
evaluate 3rd party claims accordingly. WG chairs should be willing
and able to discipline those they think are using the third party
disclosure system inappropriately. Those who think they are being
unfairly blocked may take the matter up with the Area Directors and/
or the IESG.
All of the criteria for evaluating IPR claims discussed in the
sections above apply in the case of third party disclosures as well,
to the extent they can be practiced.
6. Security Considerations 6. Security Considerations
This memo relates to IETF process, not any particular technology. This memo relates to IETF process, not any particular technology.
There are security considerations when adopting any technology, There are security considerations when adopting any technology,
whether IPR-protected or not. A working group should take those whether IPR-protected or not. A working group should take those
security considerations into account as one part of evaluating the security considerations into account as one part of evaluating the
technology, just as IPR is one part, but they are not issues of technology, just as IPR is one part, but they are not issues of
security with IPR procedures. security with IPR procedures.
There may be security issues with procedures for dealing with IPR, There may be security issues with procedures for dealing with IPR,
but they are not technical. They have more to do with but they are not technical. They have more to do with
unintentionally revealing corporate intellectual property through unintentionally revealing corporate intellectual property through
human activity than risking anything when using a protocol. human activity than risking anything when using a protocol.
References (Non-Normative) Informative References
[1] IETF, "IPR Working Group web page", 2002, <http://www.ietf.org/ [1] IETF, "IPR Working Group web page", 2002, <http://www.ietf.org/
html.charters/ipr-charter.html>. html.charters/ipr-charter.html>.
[2] Bradner, S., "The Internet Standards Process -- Revision 3", BCP [2] Bradner, S., "The Internet Standards Process -- Revision 3", BCP
9, RFC 2026, October 1996. 9, RFC 2026, October 1996.
[3] Bradner, S., "Key words for use in RFCs to Indicate Requirement [3] Bradner, S., "Key words for use in RFCs to Indicate Requirement
Levels", BCP 14, RFC 2119, March 1997. Levels", BCP 14, RFC 2119, March 1997.
[4] Wu, T., "The SRP Authentication and Key Exchange System", RFC [4] Wu, T., "The SRP Authentication and Key Exchange System", RFC
2945, September 2000. 2945, September 2000.
[5] Bradner, S., "Intellectual Property Rights in IETF Technology", [5] Bradner, S., "Intellectual Property Rights in IETF Technology",
draft-bradner-ipr-technology-00 (work in progress), July 2002. draft-ietf-ipr-technology-rights-01 (work in progress), February
2003.
[6] Bradner, S., "IETF Rights in Submissions", draft-bradner- [6] Bradner, S., "IETF Rights in Submissions",
submission-rights-00 (work in progress), June 2002. draft-ietf-ipr-submission-rights-01 (work in progress), February
2003.
Author's Address Author's Address
Scott Brim Scott Brim
Cisco Systems, Inc. Cisco Systems, Inc.
146 Honness Lane 146 Honness Lane
Ithaca, NY 14850 Ithaca, NY 14850
USA USA
EMail: sbrim@cisco.com EMail: sbrim@cisco.com
Intellectual Property Statement
The IETF takes no position regarding the validity or scope of any
intellectual property or other rights that might be claimed to
pertain to the implementation or use of the technology described in
this document or the extent to which any license under such rights
might or might not be available; neither does it represent that it
has made any effort to identify any such rights. Information on the
IETF's procedures with respect to rights in standards-track and
standards-related documentation can be found in BCP-11. Copies of
claims of rights made available for publication and any assurances of
licenses to be made available, or the result of an attempt made to
obtain a general license or permission for the use of such
proprietary rights by implementors or users of this specification can
be obtained from the IETF Secretariat.
The IETF invites any interested party to bring to its attention any
copyrights, patents or patent applications, or other proprietary
rights which may cover technology that may be required to practice
this standard. Please address the information to the IETF Executive
Director.
Full Copyright Statement Full Copyright Statement
Copyright (C) The Internet Society (2002). All Rights Reserved. Copyright (C) The Internet Society (2003). All Rights Reserved.
This document and translations of it may be copied and furnished to This document and translations of it may be copied and furnished to
others, and derivative works that comment on or otherwise explain it others, and derivative works that comment on or otherwise explain it
or assist in its implementation may be prepared, copied, published or assist in its implementation may be prepared, copied, published
and distributed, in whole or in part, without restriction of any and distributed, in whole or in part, without restriction of any
kind, provided that the above copyright notice and this paragraph are kind, provided that the above copyright notice and this paragraph are
included on all such copies and derivative works. However, this included on all such copies and derivative works. However, this
document itself may not be modified in any way, such as by removing document itself may not be modified in any way, such as by removing
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Internet organizations, except as needed for the purpose of Internet organizations, except as needed for the purpose of
developing Internet standards in which case the procedures for developing Internet standards in which case the procedures for
copyrights defined in the Internet Standards process must be copyrights defined in the Internet Standards process must be
followed, or as required to translate it into languages other than followed, or as required to translate it into languages other than
English. English.
The limited permissions granted above are perpetual and will not be The limited permissions granted above are perpetual and will not be
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This document and the information contained herein is provided on an This document and the information contained herein is provided on an
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TASK FORCE DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING TASK FORCE DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
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Acknowledgement Acknowledgement
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