Internet-Draft Harvard U. Editor March Intellectual Property Rights in IETF Technology. <draft-ietf-ipr-technology-rights-02.

Transcription

1 Network Working Group S. Bradner Internet-Draft Harvard U. Editor March 2003 Status of this Memo Intellectual Property Rights in IETF Technology <draft-ietf-ipr-technology-rights-02.txt> This document is an Internet-Draft and is subject to all provisions of Section 10 of RFC Internet-Drafts are working documents of the Internet Engineering Task Force (IETF), its areas, and its working groups. Note that other groups may also distribute working documents as Internet- Drafts. Internet-Drafts are draft documents valid for a maximum of six months and may be updated, replaced, or obsoleted by other documents at any time. It is inappropriate to use Internet-Drafts as reference material or to cite them other than as "work in progress." The list of current Internet-Drafts can be accessed at The list of Internet-Draft Shadow Directories can be accessed at Abstract The IETF policies about intellectual property rights (IPR), such as patent rights, claimed relative to technologies developed in the IETF are designed to ensure that IETF working groups and participants have as complete information about any IPR constraints on a technical proposal as possible. The policies are also intended to benefit the Internet community and the public at large, while respecting the legitimate rights of IPR holders. This memo details the IETF policies concerning IPR related to technology worked on within the IETF. It also describes the objectives that the policies are designed to meet. This memo updates RFC 2026 and with RFC XXXY, replaces RFC 10 of RFC [ note to RFC editor - replace XXXY with number of IETF SUB ] 1. Introduction Portions Copyright (C) The Internet Society (2002) Bradner [Page 1]

2 It is becoming increasingly common for IETF working groups to have to deal with claims of intellectual property rights, such as patent rights, with regards to technology under discussion in the working group. These claims can come at any point in the IETF process from before the first Internet Draft has been submitted to after a RFC has been published and the working group has been closed down. The claims can come from people submitting technical proposals as Internet Drafts, on mailing lists or at meetings, from other people participating in the working group or from third parties who find out that the work is going or has gone on. The claims can be based on granted patents or on patent applications. In some cases IPR claims can be disingenuous, made to affect the standards process rather than to inform. RFC 2026 section 10 established three basic principles regarding the IETF dealing with claims of intellectual property rights: a/ the IETF will make no determination about the validity of any particular IPR claim b/ the IETF following normal processes can decide to use technology for which IPR claims have been made if it decides that such a use is warranted c/ in order for the working group and the rest of the IETF to have the information needed to make an informed decision about the use of a particular technology, all those contributing to, and/or otherwise participating in, the working group s discussions (whether in person, or electronically via , or via other means) must disclose the existence of any IPR claim of the participant, the participant s employer or others represented by the participant (if any) that they believe would be necessary to implement the technology required. by the specific I-Ds or RFCs under discussion by the working group, subject to the reasonable and personal knowledge of the person making the disclosure (no patent search is required). In the years since RFC 2026 was published there have been a number of times when the exact intent of Section 10 has been the subject of vigorous debate within the IETF community. The aim of this document is to clarify various ambiguities in Section 10 of [RFC 2026] that led to these debates and to amplify the policy in order to clarify what the IETF is, or should be, doing. Section 2, 3 and 4 of this document address the intellectual property issues previously covered by Section 10 of RFC Section 5 defines the terms used in this memo, and sections 6 thru 12 then explain the rationale for these provisions, including some of the clarifications that have been understood since the adoption of RFC The rules and procedures set out in this document are not Bradner [Page 2]

3 intended to substantially modify or alter the IETF s current policy toward IPR in the context of the IETF standards process. They are intended to clarify and fill in procedural gaps. A companion document [IETF SUB] deals with rights (such as copyrights and trademarks) in the documents that are submitted to the IETF, including the right of IETF and its participants to publish and create derivative works of those documents. This document is not intended to address those issues. This document is not intended as legal advice. Readers are advised to consult their own legal advisors if they would like a legal interpretation of their rights or the rights of the IETF in any contributions they make. 2. Contributions in the IETF 2.1. General Policy In all matters of intellectual property rights, the intent is to benefit the Internet community and the public at large, while respecting the legitimate rights of others Rights and Permissions All Contributions By submission of a contribution, each person actually submitting the contribution, and each named co-contributor, is deemed to agree to the following terms and conditions, on his/her own behalf, and on behalf of the organizations the contributor represents (if any) when submitting the contribution. If the contribution is an Internet Draft this agreement must be acknowledged by including in the header of the contribution one of the statements in section 3.2 of [IETF SUB]. A. The contributor represents that he or she has disclosed the existence of any and all intellectual property rights which cover or may cover the technology, specifications or standards described in the contribution that (1) are owned, controlled or enforceable by the contributor or his or her employer, or any affiliate thereof, and (2) are personally and reasonably known to the contributor. The contributor does not represent that he or she personally knows of all potentially pertinent intellectual property rights owned or claimed by the his or her employer (if any) or by third parties. B. The contributor represents that there are no limits to the contributor s ability to make the grants, acknowledgments and Bradner [Page 3]

4 agreements above that are personally and reasonably known to the contributor. 3. IETF Actions (A) When any intellectual property are known, or claimed, with respect to any technology, specification, or standard described in an IETF document, and such intellectual property rights are brought to the attention of the IESG, the IESG shall not publish the IETF document without including in the document a note indicating the existence of such intellectual property rights, or claimed intellectual property rights. (B) The IESG disclaims any responsibility for identifying the existence of or for evaluating the applicability of any claimed IPR to any IETF technology, specification or standard, and will take no position on the validity or scope of any such intellectual property claims. (C) Where the IESG has been informed of claimed intellectual property rights under (A), the IETF Executive Director shall request from the claimant of such rights, a written assurance that upon approval by the IESG of the relevant specification(s), all persons will be able to obtain the right to implement, use, distribute and exercise other rights with respect to an Implementing Technology under royalty-free terms or, if that is not available, under reasonable, non-discriminatory terms unless such a statement has already been submitted. The Working Group proposing the use of the technology with respect to which the intellectual property rights are claimed may assist the IETF Executive Director in this effort. The results of this procedure shall not, in themselves, block advancement of a specification along the standards track. A working group may take into consideration the results of this procedure in evaluating the technology and the IESG may defer approval when a delay may facilitate obtaining such assurances. The results will, however, be recorded by the IETF Executive Director, and be made available. The IESG may also direct that a summary of the results be placed on- line. 3.1 Determination of Reasonable and Non-discriminatory Terms The IESG will not make any explicit determination that the assurance of reasonable and non-discriminatory terms for the use of an Implementing Technology has been fulfilled in practice. It will instead use the normal requirements for the advancement of Internet Standards to verify that the terms for use are reasonable. If the two unrelated implementations of the specification that are required Bradner [Page 4]

5 to advance from Proposed Standard to Draft Standard have been produced by different organizations or individuals or if the "significant implementation and successful operational experience" required to advance from Draft Standard to Standard has been achieved the IESG will presume that the terms are reasonable and to some degree, non-discriminatory. Note that this also covers the case where multiple implementers have concluded that no licensing is required. This presumption may be challenged at any time, including during the Last-Call period by sending to the IESG. 4. Notices to be included in all contributions for publication The following notices will be added to all standards track RFCs by the RFC Editor. (A) Disclaimer of validity: "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; nor does it represent that it has made any independent effort to identify any such rights. Information on the IETF s procedures with respect to rights in IETF documents can be found in RFC XX. [note to RFC Editor - replace XX with the number of this document] Copies of IPR statements made to the IETF Secretariat and any assurances of licenses to be made available, or the result of an attempt made to obtain a royalty-free license or permission for the use of such proprietary rights by implementers or users of this specification can be obtained from the IETF on-line IPR repository at (B) The IETF encourages all interested parties to bring to its attention, at the earliest possible time, the existence of any intellectual property rights pertaining to Internet Standards. For this purpose, each standards document shall include the following invitation: "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 Secretariat at iesgsecretary@ietf.org." Bradner [Page 5]

6 5. Definitions 5.1 contribution: in the context of this memo, a contribution to the IETF is any submission intended by the contributor for publication as an Internet Draft or RFC and any statements made within the context of an IETF process. Such statements include verbal statements in IETF meetings, as well as written and electronic communications made at any time or place, which are addressed to o the IETF plenary session, o any IETF working group or portion thereof, o the IESG, or any member thereof on behalf of the IESG, o the IAB or any member thereof on behalf of the IAB, o any IETF mailing list, including the IETF list itself, any working group or design team list, or any other list functioning under IETF auspices, o the RFC Editor or the Internet-Drafts function 5.2 IETF document: RFCs and Internet-Drafts. 5.3 IPR or intellectual property rights: means any proprietary, intellectual or industrial property rights, including, but not limited to, patent, copyright, trade secret, design, utility model, invention registration, database and data rights, whether such rights arise from a registration or renewal thereof, or an application therefore, in each case anywhere in the world. 5.4 Implementing Technology: means a technology which implements an IETF specification or standard. 6. Disclosures This section discusses who must make disclosures, how to make a disclosure, what a disclosure must include and when disclosures must be made. 6.1 Who must make a disclosure? IPR claimed by contributors to the IETF Anyone who contributes text, ideas, or technology to the IETF that includes IPR which meets the conditions in section 6.6 and that is personally and reasonably known to the contributor must disclose the IPR. This requirement specifically includes contributions that are made by any means including electronic or spoken comments. A disclosure should also be made if the revised contribution negates a previous IPR disclosure. Bradner [Page 6]

7 Contributors must disclose IPR claims meeting the description in this section, there are no exceptions to this rule IPR claimed in contributions by others Anyone who is participating in an IETF discussion about someone else s contribution which the individual believes includes IPR meeting the conditions of section 6.6 must make an IPR disclosure. Failure to provide such a disclosure is subject to the restrictions described in section IPR claims known by a third party Under section 4(B) of this document third parties that have information about IPR claims of others that may cover IETF contributions are encouraged to notify the IETF by sending an message to iesg-secretary@ietf.org. Such a notice should be sent as soon as possible after the third party realizes the connection. A third party is defined as someone who knows of IPR claims but who does not meet the conditions in section The timing of providing disclosure Timely IPR disclosure is important because working groups need to have as much information as they can while they are evaluating alternative solutions Timing of disclosure about a contribution described in section The person or the organization which claims the IPR must submit an IPR disclosure at the same time that the contribution is made unless there is already a disclosure on file which will cover the claim and the new contribution. For example, if the contribution is an update to one for which an IPR disclosure has already been made and the applicability of the disclosure is not changed by the new contribution, then no new disclosure is required. But if the contribution is a new one or is one which changes an existing contribution such that the revised contribution would be covered by new or different IPR claims then a disclosure must be made. If a contributor learns of IPR claims that meet the requirements of section 6.6, for example a new patent application or the discovery of a relevant patent in a patent portfolio, after the submission of a contribution, a disclosure must be made by the contributor or the IPR claimant as soon as reasonably possible after learning of the IPR claim Timing of disclosure about a contribution described in section The disclosure must be made as soon as reasonably possible after the IPR claims become personally and reasonably known to the IETF Bradner [Page 7]

8 participant. 6.3 How must a disclosure be made? IPR disclosures are made by sending an message to iesgsecretary@ietf.org. It is also a good idea to send a copy of the disclosure to the mailing list of the relevant working group. 6.4 What must be in a disclosure? The disclosure should list the numbers of any issued or published patents and indicate whether the claim is based on unpublished patent applications. The disclosure should also list the specific IETF documents or activity affected. An Internet-Draft must be referenced by specific version number. In addition, if an Internet-Draft includes multiple parts and it is not reasonably apparent which part of such Internet-Draft is alleged to be covered by the claims of a disclosed patent or patent application, the discloser should identify the sections of the Internet-Draft that are alleged to be so covered. If a disclosure was made on the basis of a patent application then a new disclosure must be made when the patent is granted or denied. The new disclosure must include the patent number and, if the granted patent differs from the application, must state any differences in applicability to the IETF work. Note that the requirement for an IPR disclosure is not satisfied by the inclusion of a blanket statement of possible IPR on every contribution. This is the case because the aim of the disclosure requirement is to provide information about specific IPR claims against specific technology under discussion in the IETF. The requirement is also not satisfied by a blanket statement of willingness to license all potential IPR under fair and nondiscriminatory terms for the same reason. The requirement for an IPR disclosure is met by a blanket statement of the availability of royalty-free licensing of any possible essential IPR. 6.5 What rights must be detailed in a disclosure? Since IPR disclosures will be used by IETF working groups during their evaluation of alternative technical solutions, an IPR disclosure should include information about licensing of the IPR in case implementation of the technology described in the final RFC is judged to require a license. Specifically, it should indicate whether, upon approval by the IETF of the relevant Internet standards track specification(s), all persons will be able to obtain the right to implement, use, distribute and exercise other rights with respect to an Implementing Technology under royalty-free or openly specified, reasonable, non-discriminatory terms. 6.6 When is a disclosure required? Bradner [Page 8]

9 Except for third party disclosures (which are encouraged under section 6.1.3), disclosures are required whenever the IPR in question is owned or licensed, directly or indirectly, by the individual or his/her employer or sponsor (if any) or such persons otherwise have the right to license or enforce, and a license under any claims of the patent or patent application would be required to practice the technology disclosed in the IETF document. 6.7 Call for IPR disclosures Notwithstanding the above, an explicit "Call for IPR disclosures" must accompany a working group last call (if a working group Last- Call is used to judge working group consensus - see [RFC 2418] section 7.4) and an IETF Last-Call (See [RFC 2026] section ) where one is issued. This "Call for IPR disclosures" is used to request that anyone who knows of relevant IPR let the Working Group or IESG (whichever issued the Last-Call) about the IPR. 7. What does "personally and reasonably known" mean? The phrase "personally and reasonably known" is used above. It should be read to refer to something the individual knows personally or, because of the job the individual holds, would reasonably be expected to know. This wording is used to indicate that an organization cannot purposely keep an individual in the dark about patents or patent applications just to avoid the disclosure requirement. But this requirement should not be interpreted as requiring the IETF contributor or participant (or his or her represented organization, if any) to perform a patent search to find applicable IPR. 8. Failure to provide notice There are cases where individuals are not permitted by their employers or by other factors to disclose the existence or substance of patent applications or other IPR claims. Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR claims for this, or any other reason, must not participate in these IETF activities with respect to technologies that he or she personally and reasonably knows to be covered by an IPR claim which he or she is not permitted to disclose. Participating in IETF discussions about a technology without disclosing relevant IPR that is personally and reasonably known to the individual is a violation of IETF process. 9. Evaluating alternative technologies in IETF working groups Bradner [Page 9]

10 In general, IETF working groups prefer technologies with no known IPR claims or, for technologies with claims against them, an offer of royalty-free licensing. But IETF working groups have the discretion to adopt technology with a commitment of fair and non-discriminatory terms, or even with no licensing commitment, if they feel that this technology is superior enough to alternatives with fewer IPR claims or free licensing to outweigh the potential cost of the licenses. Over the last few years the IETF has adopted stricter requirements for some security technologies. It has become common to have a mandatory-to-implement security technology in IETF technology specifications. This is to ensure that there will be at least one common security technology present in all implementations of such a specification that can be use in all cases. This does not limit the specification from including other security technologies, the use of which could be negotiated between implementations. An IETF consensus has developed that no mandatory-to-implement security should be specified in an IETF specification unless it has no known IPR claims against it or a royalty-free license is available to implementers of the specification unless there is a very good reason to do so. This limitation does not extend to other security technologies in the same specification if they are not listed as mandatory-to- implement. It should also be noted that the absence of IPR disclosures is not the same thing as the knowledge that there will be no IPR claims in the future. People or organizations not currently involved in the IETF. People or organizations that discover IPR they feel to be relevant in their patent portfolios can make IPR claims at any time. It should also be noted that the validity and enforceability of any IPR may be challenged for legitimate reasons, and the mere existence of an IPR claim should not automatically be taken to mean that the underlying IPR is valid and enforceable. Although the IETF can make no actual determination of validity or applicability of any particular IPR claim, it is reasonable that a working group will rely on their own opinions of the applicability or validity of intellectual property rights in their evaluation of alternative technologies. 10. Change control for technologies The IETF must have change control over the technology described in any standards track documents in order to fix problems that may be discovered or to produce other derivative works. Submissions to the IETF in which the submitters do not grant change control to the IETF must include the appropriate Internet Draft statement from [IETF SUB] section 3.2. Bradner [Page 10]

11 In some cases the developer of patented or otherwise controlled technology may decide to hand over to the IETF the right to evolve the technology (a.k.a "change control"). The implementation of an agreement between the IETF and the developer of the technology can be complex. (See [RFC 1790] and [RFC 2339] for examples.) Note that an IETF standards track document can make normative reference to proprietary technology in some cases, for example, when making parameter assignments or encapsulations. (e.g., "parameter value 1234 refers to proprietary technology A" or "proprietary technology B can be encapsulated using the techniques described in RFC XYZ.") 11. Licensing requirements to advance standards track documents [RFC 2026] section states: "If patented or otherwise controlled technology is required for implementation, the separate implementations must also have resulted from separate exercise of the licensing process." A key word in this text is "required." The mere existence of an IPR claim does not necessarily mean that licenses are actually required in order to implement the technology. Section of this document should be taken to cover the case where there are multiple implementations and but none of the implementers have felt that they needed to license the technology and there have are no indications that the IPR claimant will try to enforce its claim. 12. Mention of IPR claims in IETF documents Submissions to the IETF where there are known IPR claims must include the appropriate text from section 4 above. They should not contain any mention of specific claims. All specific IPR disclosures must be submitted as described in section 6. Specific IPR disclosures should not be in the affected documents because the reader could be mislead. The inclusion of a particular IPR claim in an IETF document could be interpreted to mean that the IETF has formed an opinion on the validity of the IPR claim. The reader could also be mislead to think that the included IPR claims are the only IPR claims the IETF has received concerning the document. Readers should always refer to the on-line web page to get a full list of IPR claims and disclosures received by the IETF. 13. 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 Bradner [Page 11]

12 security with IPR procedures. 14. References 14.1 Normative references [RFC 2026] Bradner, S. (ed), "The Internet Standards Process -- Revision 3", RFC 2026, October 1996 [RFC 2418] Bradner, S. (ed), "Working Group Guidelines and Procedures", RFC 2518, September 1998 [IETF SUB] work in progress: draft-iprwg-submission-00.txt 15. Acknowledgements The editor would like to acknowledge the help of the IETF ipr Working Group and, in particular the help of Jorge Contreras of Hale and Dorr for his careful legal reviews of this and other IETF IPR-related and process documents. The editor would also like to thank Valerie See for her extensive comments and suggestions. 16. Editors Address Scott Bradner Harvard University 29 Oxford St. Cambridge MA, Full copyright statement: Copyright (C) The Internet Society (2003). Except as set forth below, authors retain all their rights. This document and translations of it may be copied and furnished to others, and derivative works that comment on or otherwise explain it or assist in its implementation may be prepared, copied, published and distributed, in whole or in part, without restriction of any kind, provided that the above copyright notice and this paragraph are included on all such copies and derivative works. However, this document itself may not be modified in any way, such as by removing the copyright notice or references to the Internet Society or other Internet organizations, except as needed for the purpose of developing Internet standards in which case the procedures for rights in submissions defined in the Internet Standards process must be followed, or as required to translate it into languages other than Bradner [Page 12]

13 English. The limited permissions granted above are perpetual and will not be revoked by the Internet Society or its successors or assigns. This document and the information contained herein is provided on an "AS IS" basis and THE CONTRIBUTOR, THE ORGANIZATION HE/S HE REPRESENTS (IF ANY), THE INTERNET SOCIETY AND THE INTERNET ENGINEERING TASK FORCE DISCLAIM ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY WARRANTY THAT THE USE OF THE INFORMATION HEREIN WILL NOT INFRINGE ANY RIGHTS OR ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. 18. change log (note to RFC Editor - remove this section prior to publication) version 00 to version 01 sec 1 b - add "following normal processes" sec 1 c - reword sec add "if the contribution is an Internet Draft" sec 6 - largely reworked sec added call for IPR with WG & IETF last calls sec 7 - add "or participates in a working group discussion".br sec 8 - add "or other factors" sec 14 - redo security considerations sec 15 - added acknowledgements sec 18 - added change log version 01 to version 02 fix miscellaneous typos throughout document swap personally and reasonably change "IPR claim" to "IPR disclosure" a number of places abstract - note update of rfc 2026 sec 1 - remove ISOC sec 1(c) - reword - remove implication disclose of 3rd party IPR sec reword - remove 3rd party IPR holders sec 3 (C) - added royalty-free - removed "standards track" remove text about implementations did not add "implicit" because that is just what the IESG is doing remove "openly specified" sec added note about no licensing case sec 4 - change so RFC Editor adds IPR statements tweak 4(A) so 4(C) could be removed & make it generic to IETF documents sec 5.1 & included definitions from copyright ID Bradner [Page 13]

14 sec last sentence - reword sec append sec sec reword sec tweak wording sec replace - add royalty-free add granted patent applications sec 6.5 1st pp - replace - add royalty-free remove example classes sec replace sec 7 - tweak last sentence sec 9 - tweak wording add security RF requirement sec remove unneeded references Bradner [Page 14]