Patent Tools Feedback - Revision history

CCID-diane peters: Protected "Patent Tools Feedback" ([edit=sysop] (indefinite) [move=sysop] (indefinite))

2010-10-19T16:20:30Z

Protected "Patent Tools Feedback" ([edit=sysop] (indefinite) [move=sysop] (indefinite))

← Older revision	Revision as of 16:20, 19 October 2010
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Mike Linksvayer at 14:16, 29 September 2010

2010-09-29T14:16:46Z

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	4. A similar comment for the defensive termination as was made for issue #5 above.		4. A similar comment for the defensive termination as was made for issue #5 above.

			[[Category:Patents]]

Thinh at 19:30, 25 June 2010

2010-06-25T19:30:29Z

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	Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.		Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

	* include all patents "necessary to practice" ~~the licensed invention~~ (an example would be Microsoft's Open Specification Promise, which ~~states in part~~ "~~'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the~~ Covered Specification ~~that are described in detail and not merely referenced~~ in ~~such Specification. 'Covered Specifications' are listed below."~~)		* include all patents "necessary to practice" a Covered Specification or standard (an example would be Microsoft's Open Specification Promise, which specifically defines a "Covered Specification" in technical terms)

	Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a ~~particular~~ specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).		Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a Covered specification. However, there may be other relevant or related patents that are useful to practice, but no strictly necessary. Also, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

	* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")		* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Thinh at 19:12, 22 June 2010

2010-06-22T19:12:47Z

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	7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.		7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

	''~~Comments on the~~ Research Non-Assertion Pledge''		'''Research Non-Assertion Pledge'''

	1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.		1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

Thinh at 19:12, 22 June 2010

2010-06-22T19:12:05Z

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	This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.		This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

			4. A similar comment for the defensive termination as was made for issue #5 above.

Thinh at 19:10, 22 June 2010

2010-06-22T19:10:15Z

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	1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.		1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

			2. Should 501(c)(6) organizations (business leagues) be included under the Pledge? If so, how do you define non-commercial uses for them?

			3. It was recommended that the following modification be made:

			“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights '''by or on behalf of a Non-Profit Institution''', other than in exchange for money or other valuable consideration.

			This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

Thinh at 18:47, 22 June 2010

2010-06-22T18:47:10Z

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	Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.		Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

	6. It has been suggested that ~~the determination of when~~ patent marking ~~is appropriate~~ should be ~~made by~~ the licensor (Section 8), since patent marking by the licensee is not always appropriate.		6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

			7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

			''Comments on the Research Non-Assertion Pledge''

			1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

Thinh: Summary of Public Comments

2010-06-22T18:20:25Z

Summary of Public Comments

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 '''Model Patent License'''
-''Issue: Is the scope of the definition of "Licensed Patent Rights" broad enough?''
+''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''
 ''Discussion''
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 Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

Thinh at 17:33, 22 June 2010

2010-06-22T17:33:39Z

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	See [[Patent Tools Public Discussion]]		See [[Patent Tools Public Discussion]]

	~~Scope of Licensed~~ Patent ~~Rights~~		'''Model Patent License'''

	~~It has been suggested that we include additional statements or warnings in the patent preamble relating to~~ the scope of the ~~patent license grant. For example, such a statement might say:~~		''Issue: Is the scope of the definition of "Licensed Patent Rights" broad enough?''

	"Potential licensees are advised to conduct their own due diligence to ensure that they have licensed or bargained for all rights necessary from the patent owner to practice an invention. Licensees should be careful to note that the definition of Licensed Patent Rights does not necessarily include, in addition to the listed patents and patent applications, all other related patents and patent applications necessary to practice the invention, but only certain categories of related patents such as continuations or divisionals of the listed patents and patent applications. Thus, for example, the patent owner may hold other dominant patents which are not included in these rights unless specifically listed."		''Discussion''

	~~This statement would warn licensors of the need to conduct due diligence and not to assume that the patent owner has licensed or included all necessary rights to practice an invention.~~ The definition of Licensed Patent Rights ~~generally includes, in addition to the listed patents and patent applications, so-called "daughter" or "sister" applications~~: ~~divisionals, continuations, continuations-in-part (to the extent covering the same inventions), and foreign filings.~~		The definition of Licensed Patent Rights currently reads:

	~~Some commentators have pointed out that these daughter~~ and ~~sister~~ applications ~~should be included by default because they may be yet unpublished (~~in the ~~process of prosecution~~)~~. Therefore~~, a ~~potential licensee may not necessarily be able to discover their existence~~, ~~even with due diligence. Thus~~, ~~including these applications~~, ~~even if not specifically listed~~, ~~provides greater certainty~~ and ~~fairness~~.		“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

	However, the situation is different with parent and grand-parent patents (i.e., prior patent applications to which a patent or patent application may claim priority). In such cases, the daughter application will expressly refer back to the parent or grandparent application, and thus a potential licensee may discover them with reasonable due diligence. Furthermore, attempting to relate directly the claims of the parent or grandparent applications to the claims of the daughter application can generate ambiguity, because the priority rules allow a daughter application to claim back based on the specifications--not the claims--of the parent or grandparent application. Thus, it would be difficult to create clear and unambiguous criteria for inclusion of specific claims of the parent or grandparent application within the Licensed Patent Rights by default based solely on claims of the daughter application.

	In ~~light~~ of ~~these considerations~~, the ~~best course~~ may be to ~~alert~~ the ~~potential licensee~~ of this issue, and the ~~need~~ to ~~conduct~~ a ~~reasonable degree~~ of diligence ~~prior~~ to ~~entering into~~ a ~~license~~, ~~rather than~~ to ~~attempt~~ to ~~encompass all necessary~~ rights ~~within~~ the definition of the Licensed Patent Rights and ~~thus sow~~ the ~~seeds~~ for ~~misunderstandings~~ and ~~future disputes~~.		The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

			One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

			While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

			An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

			Thus, commentators have suggested a number of alternatives:

			* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

			Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

			* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

			Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

			* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

			Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

			* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

			Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

Thinh at 21:14, 13 May 2010

2010-05-13T21:14:03Z

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	However, the situation is different with parent and grand-parent patents (i.e., prior patent applications to which a patent or patent application may claim priority). In such cases, the daughter application will expressly refer back to the parent or grandparent application, and thus a potential licensee may discover them with reasonable due diligence. Furthermore, attempting to relate directly the claims of the parent or grandparent applications to the claims of the daughter application can generate ambiguity, because the priority rules allow a daughter application to claim back based on the specifications--not the claims--of the parent or grandparent application. Thus, it would be difficult to create clear and unambiguous criteria for inclusion of specific claims of the parent or grandparent application within the Licensed Patent Rights by default based solely on claims of the daughter application.		However, the situation is different with parent and grand-parent patents (i.e., prior patent applications to which a patent or patent application may claim priority). In such cases, the daughter application will expressly refer back to the parent or grandparent application, and thus a potential licensee may discover them with reasonable due diligence. Furthermore, attempting to relate directly the claims of the parent or grandparent applications to the claims of the daughter application can generate ambiguity, because the priority rules allow a daughter application to claim back based on the specifications--not the claims--of the parent or grandparent application. Thus, it would be difficult to create clear and unambiguous criteria for inclusion of specific claims of the parent or grandparent application within the Licensed Patent Rights by default based solely on claims of the daughter application.

	In light of these considerations, the best course may be to alert the potential licensee of this issue, and the need to conduct a reasonable degree of diligence prior to entering into a license, rather than attempt to encompass all necessary rights within the definition of the Licensed Patent Rights and thus sow the seeds for future disputes.		In light of these considerations, the best course may be to alert the potential licensee of this issue, and the need to conduct a reasonable degree of diligence prior to entering into a license, rather than to attempt to encompass all necessary rights within the definition of the Licensed Patent Rights and thus sow the seeds for misunderstandings and future disputes.