Re: FW: PatCom Report
>Note proposed pro-forma patent letter attached. I would prefer that you
>don't send this to reflector until it is edited and approved by IEEE , so we
>don't have multiple patent leters in the offing (it will get too confusing).
>However, please seek your own legal council and I would appreciate any
>comments on these letters that I will collect and send to Jerry Peterson,
>PatCom chair, for review at the Dec Standards Board Meeting
>
>Jim Carlo(jcarlo@ti.com) Cellular:1-214-693-1776 Voice&Fax:1-214-853-5274
In looking at these letters, I think it is helpful to compare them to
the current versions. Below, I have stripped off the stuff that's
basically unchanged to help isolate the changes. Apart from a
(partially successful) attempt at general cleanup, the main thrust of
the change follows this note from the June PatCom minutes: "Tom
Wettach will make recommendations on whether or not the IEEE SA needs
to add Patent Policy to cover handling of withdrawn standards. The
policy concern centered around the impact on at least two scenarios:
1) those who have standards related patent agreements in place at the
time of the withdrawal and, 2) those who wish to implement the
withdrawn standard and would need to seek a patent for that reason.
ACTION ITEM: Tom Wettach will submit a proposed change to the Patent
Assurance Letter for September 2000 PatCom Meeting."
The thing that still bugs me is that both versions ask for a "letter
of assurance such as the one attached." I think it would be better to
use a form with just the blanks to be filled in instead of basically
inviting lawyers to be crafty. It seems to me that this is the only
way to get all of the participants onto equal footing. Some people
have told me that no lawyer would submit such a form, but it is my
understanding that a number of other SDOs are successful in the "form
letter of assurance" approach. I would like to hear some opinions
from those who are less naive than me on this issue.
Roger
=============================================================
New:
The IEEE (name of working group) working group is in the process of
developing a standard, IEEE Pnnn (name of standard/recommended
practice/guide), that may utilize patented technology. As such, there
is the possibility that patent or patent application rights may be
required to implement this standard. A copy of the draft standard is
included.
Please review and advise as to whether or not your patent(s) require
a license to implement the proposed standard.
The IEEE patent policy requires that I request a letter of assurance
such as the one attached if your technology applies.
Old:
The IEEE (name of working group) working group is in the process of
developing a standard, IEEE Pnnn (name of standard/recommended
practice/guide), that may utilize (technology using the patent). As
such, there is the possibility that this standard may be covered by
patents that (company) holds or patent applications. A copy of the
draft standard is included.
Please review and advise as to whether or not your patents apply to
information in the document.
The IEEE patent policy requires a release letter such as the one
attached if your technology applies.
New:
We hereby agree that (company) will provide licenses under our
(country) patents and/or patent applications which meet the following
description (optional company text ) with respect to the proposed
IEEE Pnnn standard and subsequent revisions thereof. Therefore, in
the event the proposed standard is adopted and the cited patents are
required to implement the standard (company) agrees upon written
request to grant for the purpose of implementing the standard a
nonexclusive license on a nondiscriminatory basis and on reasonable
terms and conditions. It is understood that if the standard is
withdrawn, (company) has no obligation to license a party requesting
a license after such withdrawal.
Old:
We hereby agree that (company) will provide licenses under our
(country) Patent # (and/or patent applications) with respect to the
proposed IEEE Pnnn standard and subsequent revisions. In that regard:
In the event the proposed standard is adopted and the standard cannot
be practiced without the use of the cited patent, (company) agrees
upon written request to grant a nonexclusive license under such
patent on a nondiscriminatory basis and on reasonable terms and
conditions.