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Intellectual Property Rights

Intellectual Property Rights & Procedures
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IDEAlliance 2003-19
IDEAlliance Working Group Intellectual Property Policy

Approved by Board of Directors Meeting #9, July 16, 2002 and amended by ballot in September, 2003

1. General Policy

In all matters of intellectual property (IP) rights and procedures, the intention is to benefit the public at large, while respecting the legitimate rights of IP owners.

To promote the widest adoption of standards in the publishing community, International Digital Enterprise Alliance, Inc. (IDEAlliance) seeks to issue specifications that may be implemented on a Royalty-Free (RF) basis. The goal of this policy is to assure that Specifications produced under this policy can be implemented on a Royalty-Free (RF) basis.

To this end, the Working Group will require specifications it produces to be implementable on an RF basis, to the best ability of the Working Group and IDEAlliance.

2. Confidentiality Obligations for Contributions

No contribution that is subject to any requirement of confidentiality or any restriction on its dissemination may be considered in any part of the IDEAlliance Specification Process, and there must be no assumption of any confidentiality obligation with respect to any such contribution. No contribution should be made on the basis of an assumed confidentiality obligation or restriction on dissolution.

3. Rights and Permissions
In the course of standards work, IDEAlliance receives contributions in various forms and from many organizations, entities and individuals (Contributor). To best facilitate the dissemination of these contributions, it is necessary to understand the intellectual property rights (IPR) relating to the contributions.

3.1. All Contributions

By submission of a contribution, each Contributor actually submitting the contribution shall explictly agree to the following terms and conditions on his own behalf, and on behalf of the organization (if any) he represents that owns any proprietary rights in the contribution. Where a contribution identifies contributors in addition to the contributor(s) who provide the actual contribution, the actual submitter(s) represent that each other named contributor was made aware of and agreed to accept the same terms and conditions.

  1. To the extent that the contribution is or may be subject to copyright, the contributor and the organization he represents (if any) that owns any copyright in the contribution, grant an unlimited, perpetual, non-exclusive, royalty-free, world-wide right and license to IDEAlliance under any copyrights in the contribution. This license includes the right to copy, publish and distribute the contribution in any way, and to prepare derivative works that are based on or incorporate all or part of the contribution, the license to such derivative works to be of the same scope as the license of the original contribution.
  2. The contributor acknowledges that IDEAlliance has no duty to publish or otherwise use or disseminate any contribution.
  3. The contributor, and the organization he represents (if any) that owns any rights in the contribution, agree that no information in the contribution is confidential and that IDEAlliance and its affiliated organizations may freely disclose any information in the contribution.
  4. The contributor represents that, if required by this policy, he has disclosed the existence of any proprietary or intellectual property rights in the contribution that are reasonably and personally known to the contributor.
  5. The contributor represents that there are no known limitations to the contributor's ability to make the grants, acknowledgments and agreements above that are reasonably and personally known to the contributor.

3.2. IDEAlliance Specifications

(A) If IDEAlliance receives written notice of any known or claimed patents, patent applications, or other proprietary rights as to any specification developed within the IDEAlliance process, IDEAlliance shall not advance the specification without noting in a public disclosure area on the IDEAlliance web site the existence of such rights, or claimed rights. Where implementations are required before advancement of a specification, only implementations that have, by statement of the implementors, taken adequate steps to comply with any such rights, or claimed rights, shall be considered for the purpose of showing the adequacy of the specification.

(B) IDEAlliance disclaims any duty to identify the existence or to evaluate the applicability of any claimed copyrights, patents, patent applications, or other IP rights, and takes no position on the validity or scope of any such rights. IDEAlliance will not make any claims or determinations as to whether IP claims are essential to the implementation of any IDEAlliance-created specification.

3.3. Licensing Goals for IDEAlliance Specificationss

In order to promote the widest adoption of Print and Publishing standards, IDEAlliance seeks to issue Specifications that can be implemented on a Royalty-Free (RF) basis. Subject to the conditions of this policy, IDEAlliance will not approve a Specification if it is aware that Essential Claims exist which are not available on Royalty-Free terms.

To this end, Working Group charters will include a reference to this policy and a requirement that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and IDEAlliance.

3.4. Licensing Obligations of Working Group Participants

The following obligations shall apply to all participants in IDEAlliance Working Groups. These obligations will be referenced from each Working Group charter and Calls for Participation.

3.4.1. IDEAlliance RF Licensing Requirements for All Working Group Participants

As a condition of participating in a Working Group, each participant (IDEAlliance Members, IDEAlliance Staff, invited experts, and members of the public) shall agree to make available under IDEAlliance RF licensing requirements any Essential Claims related to the work of that particular Working Group. This requirement includes Essential Claims that the participant owns and any that the participant has the right to license without obligation of payment or other consideration to an unrelated third party. With the exception of the provisions of section 3.5 below, IDEAlliance RF licensing obligations made concerning the work the particular Working Group and described in this policy are binding on participants for the life of the patents in question and encumber the patents containing Essential Claims, regardless of changes in participation status or IDEAlliance Membership.

3.4.2. Limitation on Licensing Requirement for Non-Participating Members

Only the affirmative act of joining a Working Group, or otherwise agreeing to the licensing terms described here, will obligate a Member to the IDEAlliance RF licensing commitments. Mere membership in IDEAlliance alone, without other factors, does not give rise to the RF licensing obligation under this policy.

3.4.3. Licensing Commitments in IDEAlliance Contributions

At the time an IDEAlliance Contribution is made, all Contributors and any others who provide patent licenses associated with the submitted document must indicate whether or not each entity (Contributors and other licensors) will offer a license according to the IDEAlliance RF licensing requirements for any portion of the Contribution that is subsequently incorporated in a IDEAlliance specification. The IDEAlliance staff may acknowledge the Contribution if the answer to the licensing commitment is either affirmative or negative, and shall not acknowledge the Contribution if no response is provided.

3.4.4. Note on Licensing Commitments for Invited Experts

Invited experts participate in Working Groups in their individual capacity. An invited expert is only obliged to license those claims over which s/he exercises control.

3.5 Exclusion From IDEAlliance RF Licensing Requirements

Under the following conditions, Working Group participants may exclude specifically identified and disclosed Essential Claims from the overall IDEAlliance RF licensing requirements:

3.5.1. Exclusion With Continued Participation

Specific Essential Claims may be excluded from the IDEAlliance RF licensing requirements by a participant who seeks to remain in the Working Group only if that participant indicates its refusal to license specific claims no later than 150 days after the publication of the first public Working Draft, by specifically disclosing Essential Claims that will not be licensed on IDEAlliance RF terms. A participant who excludes Essential Claims may continue to participate in the Working Group.

If any claims are made essential by the final Specification as a result of subject matter not present or apparent in the latest public Working Draft published within 90 days after the first public Working Draft, the participant may exclude these new Essential Claims, and only these claims, by using this exclusion procedure within 60 days after the publication of the Last Call Working Draft. After that point, no claims may be excluded. (Note that if material new subject matter is added after Last Call, then a new Last Call draft will have to be produced, thereby allowing another exclusion period for 60 days after that most recent Last Call draft.)

3.5.2. Exclusion and Resignation From the Working Group

A participant may resign from the Working Group within 90 days after the publication of the first public Working Draft and be excused from all licensing commitments arising out of Working Group participation.

If a participant leaves the Working Group later than 90 days after the publication of the first public Working Draft, that participant is only bound to license Essential Claims based on subject matter contained in the latest Working Draft published before the participant resigned from the Working Group. In addition, departing participants have 60 days after their actual resignation to exclude Essential Claims made essential by documents not referenced in the Call for Exclusion (see section 3.5.5) if:

  1. such claims are essential to subject matter that is contained in the latest Working Draft published before the participant resigns, and
  2. such subject matter is not present or apparent in the latest Working Draft published within 90 days after the first public Working Draft.

The participant follows the same procedures specified in this section 3.5 for excluding claims in issued patents, published applications, and unpublished applications. Participants resigning from a Working Group are still subject to all disclosure obligations described in section 5.

3.5.3. Joining an Already Established Working Group

Participants who join a Working Group more than 90 days after the publication of the first public Working Draft must exclude Essential Claims covered in the latest Working Draft published within 90 days after the first public Working Draft at the later of 150 days after the publication of the first public Working Draft or upon joining the Working Group.

3.5.4. Exclusion Procedures for Pending, Unpublished Patent Applications

Exclusion of Essential Claims in pending, unpublished applications follows the procedures for exclusion of issued claims and claims in published applications in section 3.5.1 through

3.5.3, except that the final deadline for exclusion of unpublished claims is at Last Call plus 60 days for any material, regardless of whether or not it was contained in the documents referenced in the Call for Exclusion document. Nevertheless, participants have a good faith obligation to make such exclusions as soon as is practical after the publication of the first Working Draft that includes the relevant technology.

Any exclusion of an Essential Claim in an unpublished application must provide either:

  1. the text of the filed application; or
  2. identification of the specific part(s) of the specification whose implementation makes the excluded claim essential.

If option 2 is chosen, the effect of the exclusion will be limited to the identified part(s) of the specification.

3.5.5. Exclusion Mechanics

A Call for Exclusion will be issued by the Working Group Team Contact indicating the relevant documents against which participants must make exclusion statements as well as precise dates and deadlines for making any exclusions. In case there is any dispute about the dates for exclusion, the dates indicated in the Call for Exclusion are controlling. The Call for Exclusion will be sent to the Working Group mailing list. In the event that a Working Group issues more than one Specification-track document, the exclusion procedure will be employed for each series of documents individually.

4. IDEAlliance Royalty-Free (RF) Licensing Requirements

With respect to a Specification developed under this policy, a IDEAlliance Royalty-Free license shall mean a non-assignable, non-sublicensable license to make, have made, use, sell, have sold, offer to sell, import, and distribute and dispose of implementations of the Specification that:

 

1. shall be available to all, worldwide, whether or not they are IDEAlliance Members;

2. shall extend to all Essential Claims owned or controlled by the licensor;

3. may be limited to implementations of the Specification, and to what is required by the Specification;

4. may be conditioned on a grant of a reciprocal RF license (as defined in this policy) to all Essential Claims owned or controlled by the licensee. A reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all.

5. may not be conditioned on payment of royalties, fees or other consideration;

6. may be suspended with respect to any licensee when licensor is sued by licensee for infringement of claims essential to implement any IDEAlliance specification;

7. may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee, but may include reasonable, customary terms relating to operation or maintenance of the license relationship such as the following: choice of law and dispute resolution;

8. shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the IDEAlliance Royalty-Free license as offered by the licensor.

License term:

9. The RF license conforming to the requirements in this policy shall be made available by the licensor as long as the Specification is in effect. The term of such license shall be for the life of the patents in question, subject to the limitations of 4(10).

10. If the Specification is rescinded by IDEAlliance, then no new licenses need be granted but any licenses granted before the Specification was rescinded shall remain in effect.

All Working Group participants are encouraged to provide a contact from which licensing information can be obtained and other relevant licensing information. Any such information will be made publicly available along with the patent disclosures for the Working Group in question.

5. Disclosure

5.1. Disclosure Requirements

Disclosure is required when both of the following are true:

  1. an individual in a Member organization receives a disclosure request as described in section 5.3; and
  2. that individual has actual knowledge of a patent which the individual believes contains Essential Claim(s) with respect to the specification for which disclosure is requested.

Anyone in a Member organization who receives a disclosure request and who has such knowledge must inform that AC Rep. Where disclosure is required, the AC Rep will do so.

5.2. Disclosure Exemption

The disclosure obligation as to a particular claim is satisfied if the holder of the claim has made a commitment to license that claim under IDEAlliance RF licensing requirements and the claim is no longer subject to exclusion under section 3.5. An Essential Claim is no longer subject to exclusion if a patent holder has affirmatively agreed to license the Essential Claim (effectively waiving its right to exclude such patent under section 4) or if the relevant exclusion period under section 4 has lapsed.

5.3. Disclosure Requests

Disclosure requests will be included in the "Status of This Document" section of each Specification track document as it reaches each new maturity level (Working Draft, Last Call Working Draft, IDEAlliance Specification). Separate requests may be issued by IDEAlliance to any party suspected of having knowledge of Essential Claims. Such disclosure requests will instruct the recipient to respond through the Working Group Participant.

5.4. Disclosure Contents

Disclosure statements must include:

  1. the patent number, but need not mention specific claims
  2. the Working Group and/or Specification to which it applies

The disclosure statements should be sent to the relevant disclosure mailing list, currently <patent-disclosure@idealliance.org>.

5.5. Disclosure of Laid-Open or Published Applications

In the case of laid-open or published applications, the Member's good faith disclosure obligation extends to unpublished amended and/or added claims that have been allowed by relevant legal authorities and that the Member believes to be Essential Claims. To satisfy the disclosure obligation for such claims, the Member shall either:

  1. disclose such claims, or
  2. identify those portions of the IDEAlliance specification likely to be covered by such claims.

5.6. Disclosure of Pending, Unpublished Applications

If a IDEAlliance Member includes claims in a patent application and such claims were developed based on information from an IDEAlliance Working Group or IDEAlliance document, the Member must disclose the existence of such pending unpublished applications as the member believes may have essential claims.

5.7. Good Faith Disclosure Standards

Satisfaction of the disclosure requirement does not require that the discloser perform a patent search or any analysis of the relationship between the patents that the Member organization holds and the specification in question. Complete disclosure of information actually known to the discloser is required.

Disclosure of third party patents is only required where the Working Group participant has been made aware that the third party patent holder or applicant has asserted that its patent contains Essential Claims, unless such disclosure would breach a pre-existing non-disclosure obligation.

5.8. Timing of Disclosure Obligations

The disclosure obligation is an ongoing obligation that begins with the Call for Participation. Full satisfaction of the disclosure obligation may not be possible until later in the process when the design is more complete. In any case, disclosure as soon as practically possible is required.

5.9. Termination of Disclosure Obligations

The disclosure obligation terminates when the Specification is published in its final released form or when the Working Group terminates.

5.10. Disclosure Obligations of Invited Experts

Invited experts or members of the public participating in a Working Group must comply with disclosure obligations to the extent of their own personal knowledge.

5.11. Disclosures to Be Publicly Available on Specification Track

Patent disclosure information for each specification on the Specification track will be made public on the IDEAlliance web site along with each public Working Draft issued by the Working Group.

6. Exception Handling

If a patent containing Essential Claims has been disclosed, but is not available on RF terms, this matter shall be brought to the attention of the President of IDEAlliance. The President will then notify the Working Group. The President, working in cooperation with the Working Group, will advise the Working Group whether to: (a) disband the Working Group; (b) direct the Working Group to exclude this area from the standardization effort so that the specification remains implementable on royalty-free basis; (c) Make the implementation of the relevant portion of the specification optional so that the non-optional part of the specification remains implementable on royalty-free basis; or (d) suggest alternate licensing terms as proposed below. Item "b" is the most preferred outcome.

6.1. Procedure for Considering Alternate Licensing Terms

After having made every effort to resolve the conflict through options a, b, and c under 6., the President of IDEAlliance, working with the Working Group chair and members, may propose that specifically identified patented technology be included in the Specification even though such claims are not available according to the IDEAlliance RF licensing requirements of this policy. The Proposal must explain:

  • why the chartered goals of the Working Group cannot be met without inclusion of the identified technology;
  • how the proposed licensing terms will be consistent with widespread adoption.

The Proposal must include:

  • a complete list of claims and licensing terms of the proposed alternative arrangements; and,
  • a proposed charter for the Working Group, unless the Specification has been issued and no new work is required.

If the President determines that the Proposal is the best alternative consistent with the IDEAlliance mission, the interests of the print and publishing community, and is clearly justified despite the expressed preference of the IDEAlliance Membership for RF licensing, then the Proposal shall be circulated for public comment and Working Group review. The Working Group will then need to recharter under these new IP terms. Members of the Working Group who are bound to RF terms are not released from their obligations by virtue of the Proposal alone. As with any newly chartered Working Group, new commitments must be made, along with possible exclusions. In order to expedite the process, the Proposal should consider whether additional claims would be excluded under the new charter and include such information in the Proposal.

7. Notices

(A) IDEAlliance specifications shall include the following notice:

"IDEAlliance 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. IDEAlliance does not represent that it has made any effort to identify any such rights. Information on IDEAlliance's procedures with respect to rights in IDEAlliance specifications can be found at the IDEAlliance website. Copies of claims of rights made available for publication, 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 President of IDEAlliance."

(B) IDEAlliance encourages all interested parties to bring to its attention, at the earliest possible time, the existence of any intellectual property rights pertaining to IDEAlliance specifications. Each IDEAlliance specification shall include the following invitation:

"IDEAlliance requests interested parties to disclose any copyrights, patents or patent applications, or other proprietary rights which may cover technology that may be required to implement this specification. Please address the information to the President of IDEAlliance."

(C) The following copyright notice and disclaimer shall be included in all IDEAlliance specification-related documentation:

"Copyright (C) International Digital Enterprise Alliance, Inc. [IDEAlliance] (year). All Rights Reserved.

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 IDEAlliance, except as needed for the purpose of developing IDEAlliance specifications, in which case the procedures for copyrights defined in the IDEAlliance Intellectual Property Policy document must be followed, or as required to translate it into languages other than English.

The limited permissions granted above are perpetual and will not be revoked by IDEAlliance or its successors or assigns.

NO WARRANTY, EXPRESSED OR IMPLIED, IS MADE REGARDING THE ACCURACY, ADEQUACY, COMPLETENESS, LEGALITY, RELIABILITY OR USEFULNESS OF ANY INFORMATION CONTAINED IN THIS DOCUMENT OR IN ANY SPECIFICATION OR OTHER PRODUCT OR SERVICE PRODUCED OR SPONSORED BY IDEALLIANCE. THIS DOCUMENT AND THE INFORMATION CONTAINED HEREIN AND INCLUDED IN ANY SPECIFICATION OR OTHER PRODUCT OR SERVICE OF IDEALLIANCE IS PROVIDED ON AN " AS IS" BASIS. IDEALLIANCE DISCLAIMS ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO, ANY ACTUAL OR ASSERTED WARRANTY OF NON-INFRINGEMENT OF PROPRIETARY RIGHTS, MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE.

NEITHER IDEALLIANCE NOR ITS CONTRIBUTORS SHALL BE HELD LIABLE FOR ANY IMPROPER OR INCORRECT USE OF INFORMATION. NEITHER IDEALLIANCE NOR ITS7 CONTRIBUTORS ASSUME ANY RESPONSIBILITY FOR ANYONE'S USE OF INFORMATION PROVIDED BY IDEALLIANCE. IN NO EVENT SHALL IDEALLIANCE OR ITS CONTRIBUTORS BE LIABLE TO ANYONE FOR DAMAGES OF ANY KIND, INCLUDING BUT NOT LIMITED TO, COMPENSATORY DAMAGES, LOST PROFITS, LOST DATA OR ANY FORM OF SPECIAL, INCIDENTAL, INDIRECT, CONSEQUENTIAL OR PUNITIVE DAMAGES OF ANY KIND WHETHER BASED ON BREACH OF CONTRACT OR WARRANTY, TORT, PRODUCT LIABILITY OR OTHERWISE.

(D) Where, pursuant to a notification under this Policy, IDEAlliance is aware at the time of publication of proprietary rights claimed with respect to an IDEAlliance specification, or the technology described or referenced therein, such specification shall contain the following notice:

"IDEAlliance has been notified of intellectual property rights claimed in regard to some or all of the contents of this specification. For more information consult the online list of claimed rights on a public disclosure area on the IDEAlliance web site."

8. Definition of Essential Claims

8.1. Essential Claims

"Essential Claims" shall mean all claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by implementation of the Specification. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing the normative portions of the Specification. Existence of a non-infringing alternative shall be judged based on the state of the art at the time the specification becomes a Specification.

8.2. Limitations on the Scope of Definition of Essential Claims

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

  1. any claims other than as set forth above even if contained in the same patent as Essential Claims; and
  2. claims which would be infringed only by:
    • portions of an implementation that are not specified in the normative portions of the Specification, or
    • enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Specification and are not themselves expressly set forth in the Specification (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or
    • the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Specification.
  3. design patents and design registrations.

8.3. Definition of Normative, Optional and Informative

For purposes of this definition, the normative portions of the Specification shall be deemed to include only architectural and interoperability requirements. Optional features in the RFC 2119 [KEYWORDS] sense are considered normative unless they are specifically identified as informative. Implementation examples or any other material that merely illustrate the requirements of the Specification are informative, rather than normative.

8.4. Definition of Contribution

Contributions are ideas, inventions, intellectual property and/or documentation submitted to the Working Group which are reasonably understood by the Working Group at the time of submission to have been submitted for purposes of incorporation into the Working Group specifications.

9. Acknowledgments

This Document draws inspiration from the W3C patent policy of May 20, 2003 and IETF IP policy. We acknowledge the substantial work that each of these organizations has done to refine guidelines in this difficult area, and find much of their work instructive for the different but similar issues of IDEAlliance.

 

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