Considerations for Intellectual Property Rights in IETF Standards

This memo expresses purely the personal opinion of the author and does not describe in any part a company's position concerning IPRs in standards. Furthermore, being an engineer and not a patent attorney the statements concerning legal details shouldn't be taken as proved. The ideas expressed in this memo are stemming from many years' involvement in standardization and in particular from the experiences with IPR discussions in the ROHC working group.

IPRs in standards have been in discussion for many years. There are many publications covering the legal aspects of patents and benefits and drawbacks for standards development organizations. Several special issues have been published by the IEEE recently . Most SDOs dealing with communication standards are following the concept of Open Standards. A good explanation about the principles of Open Standards is given by . Among the principles are the issues of 'Open IPR' and 'Open Use'. The issue 'Open IPR' is requesting the declaration of any known IPR during the standardization process by the participants. To fulfill this issue all SDOs dealing with Open Standards have according rules in their charters. 'Open Use' means that Open Standards should be implementable and useable without the need to strive for licenses from patent holders. Because there is no way to prove that a particular technology is not covered by IPRs this principle is barely to achieve. Nevertheless some standardization organizations are staying with this principle, with remarkable success. This memo focuses on the methods the IETF is achieving 'Open IPR' and 'Open Use' and expresses some possible extensions to the procedures of the IETF to allow consideration of IPR covered proposals for restricted areas.

The Intellectual Property Law knows about several different kinds of IPRs. While Trade Secrets, Trademarks or Semiconductor Chip Protection Act normally do not have relevance in standardization, the Copyright and the Patent are quite important.

The US Code defines, that "Copyright protection subsists in original works of authorship fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device". Copyright protects the expression of an idea, not the idea itself. In standardization Copyright protects the expression of the standard means the text, the drawings, the perceivable form. Copyright grants the owner exclusive rights for reproducing, preparing derivative work and distributing copies of the work. As standards are normally a derivative work put together out of many particular contributions, SDOs require from all contributors to a standard, that the Copyright for standards contributions is handed over to the SDO.

Patents were originally introduced to promote the progress of science and technology by granting to inventors exclusive rights for a limited time, when the inventions are made known to the public. In extension of the rights provided by Copyright, Patents are covering the idea itself, which must be a new and useful process, machine, manufacture of matters or new and useful improvement of these. Patents provide the patent owner a complete monopoly on the invention and the use of it. Even if the same invention is made fully independently by somebody else, the patent owner can prevent the use of the invention, that means, prohibit that the (re)inventor is taking use of the idea.

While Copyright does not cause major concerns in standardization - appropriate rules have been set up by all SDOs and are well understood and accepted by the contributors to standardization - the monopoly, a Patent grant to the owner, might cause serious trouble in standardization. It might happen that a SDO develops with considerable effort a new standard and this standard couldn't be used by anybody due to a Patent, which covers part of such standard and is not allowed to be used. More seriously, it is nearly impossible to make sure, that a standard is not covered by any Patent, as invention filings are not accessible by the public for some time. To cope with these matters SDOs are trying to get knowledge about related invention filings and Patents as early as possible. It is common in Open Standardization that all participants in a particular standardization process have to declare the existence of all their related Patents. If anything gets known, the SDO is trying to get a disclaimer of the Patent owner that the patent can be used in such standard and all the implementers of such standard get licenses under fair and reasonable terms. What is meant by 'fair and reasonable' is normally left open by the disclaimer, and might be subject of business contracts between the Patent owner and the manufacturer later.

The conditions of a license for a Patent covered in a standard will be closely related to the importance of the standard for a business. Main differentiation might be compulsory standards, which are unconditionally necessary for a particular application, and voluntary standards, which are open to acceptance by the market and can be replaced by something equivalent, if the conditions are too expensive.

With the deregulation of telecommunication worldwide the number of compulsory standards for telecommunication diminishes steadily, but especially for telephony and public mobile communication systems like 2G and 3G there still exist many standards a operator has to implement when getting a license for telecommunication or spectrum usage. Patents being covered by compulsory standards have to be licensed in any case, and this might contribute to the conditions of the license.

Open standards are aimed to be voluntary standards. They often provide particular functions, not a complete network architecture, but building blocks, which can be used to set up a network architecture. It is quite feasible with voluntary standards, that the same function can be realized by another voluntary standard, based on different procedures, potentially avoiding known patents. Furthermore acceptance of a particular standard by the market might closely depend on the conditions to get all the licenses necessary for implementing the standard. The market will go most likely for the standard not needing a license at all, and the organizational effort to set up licensing agreements is an important issue especially for smaller companies. The fast success of the Internet and the World-Wide-Web may have been highly driven by the fact, that the relevant standards are license free. Getting profits out of a patent used in a voluntary standard might be a difficult task. If alternatives to an incumbent procedure are available, the implementers will most likely go with solutions not covered by patents to avoid expensive business negotiations as well as license fees. And if an alternative is established in the market, nobody will have any interest in the patent and all the effort put into the patent will be lost. Being in such an open and competitive environment, patents can be treated like selling goods in an open market. The market will decide whether it is worth to go with an incumbent proposal.

The IETF is developing voluntary standards for the Internet and has established well thought procedures to deal with IPRs in standards discussions. Chapter 10 of RFC2026 specifies the rules of the IETF on Intellectual Property Rights in standards discussion. It defines the provisions related to copyrights, authors of submissions to the standards process have to grant to the IETF, as well as the procedure to declare knowledge of incumbent proposals as far as known to the author. IETF working groups have the goal to develop unincumbent solutions. To reach this goal the IETF has the intention to get known of incumbent proposals as early as possible in the standardization process to be able to look for alternative, not incumbent solutions. The IETF requires that contributors have to disclaim their knowledge about IPRs in their proposals together with submission of the proposal. It is likely in an experts' world that the authors of contributions have good knowledge about the eventual IPRs of their own proposals in general. With many experts contributing their IPR knowledge into the standards discussion it becomes quite likely, that all IPRs related to the result of the standards discussion gets known. In this sense a long list of coauthors on Internet Drafts is very supportive for developing unincumbent standards. It is common fear of contributors that their costly established rights on inventions will loose the value when their incumbent solution will become known to the IETF. An IETF working group will likely develop a standard not comprising the incumbent solutions contributed to the IETF. Unfortunately this leaves not much space for incumbent functions in standards providing superior performance.

Open, license-free standards have shown incredible benefits for the global economy. A huge community inside and outside the IETF is supporting the idea of open source systems and open source software. They are all needing license-free standards to be able to implement them in the open source environment. IETF standards specifying protocols aimed for general use in the Internet should be kept license-free to support the fast and broad adoption in the market The IETF should stay with the goal to develop unincumbent standards. It might be helpful to provide a more accessible database of IPR declarations than the current list on the IETF web-site to support implementers as well as working groups. In cases where an incumbent solution might provide additional benefits for particular applications, the standard should be split up in the license-free mandatory part and optional enhancements probably covered by IPRs. Keeping license-free parts and incumbent parts separate would provide a well defined way for the IETF to include incumbent solutions as optional enhancements. Incumbent solutions should never become part of the base specification or mandatory part of the standard to enable at least interoperability of basic functions between all implementations. The IETF has long experience with protocols allowing optional enhancements. PPP might be one of the best examples. Optional enhancements might be, but do not have to be covered by IPRs providing additional functionality to the standard. This allows the use of the best technology available for enhancements of IP protocols. Optional enhancements should always allow several different solutions for the same requirement enabling a competitive environment not only for the best technical solution but also for the most appropriate license condition.