Network Working Group S. Bradner Internet-Draft Harvard U. Editor February 2002 Intellectual Property Rights in IETF Technology Status of this Memo This document is an Internet-Draft and is subject to all provisions of Section 10 of RFC 2026. 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 http://www.ietf.org/ietf/1id-abstracts.txt The list of Internet-Draft Shadow Directories can be accessed at http://www.ietf.org/shadow.html 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. Portions Copyright (C) The Internet Society (2002) 1. Introduction It is becoming increasingly common for IETF working groups to have to Bradner [Page 1] Internet-Draft IP in IETF Technology February 2002 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 3rd 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 principals 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 email, or via other means) must disclose the existence of any patent claim that they believe is 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 2026. 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 2026. The rules and procedures set out in this document are not intended to substantially modify or alter IETF's or ISOC's current policy toward IPR in the context of the IETF standards process. They Bradner [Page 2] Internet-Draft IP in IETF Technology February 2002 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. If you would like a legal interpretation of your rights or the rights of the IETF in any contributions you make, you are advised to consult your own legal advisor 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. 2.2. Rights and Permissions 2.2.1. All Contributions By submission of a contribution, each person actually submitting the contribution is deemed to agree to the following terms and conditions on their own behalf, on behalf of the organizations (if any) the contributor represents when submitting the contribution and on behalf of the owners of any intellectual property rights claimed in the contribution. Where a submission identifies contributors in addition to the contributor(s) who provide the actual submission, the actual submitter(s) represent that each other named contributor was made aware of and agreed to accept the same terms and conditions on their own behalf, on behalf of any organizations s/he may represent and any known owner of any intellectual property rights in 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 reasonably and personally 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. Bradner [Page 3] Internet-Draft IP in IETF Technology February 2002 B. The contributor represents that there are no limits to the contributor's ability to make the grants acknowledgments and agreements above that are reasonably and personally 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. Where implementations are required before advancement of a standards track specification, only implementations that have, by statement of the implementers, taken such intellectual property rights into account shall be considered for the purpose of showing the adequacy of the specification. (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 rights. (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 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 openly specified, 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 Bradner [Page 4] Internet-Draft IP in IETF Technology February 2002 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 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. This presumption may be challenged at any time, including during the Last-Call period by sending email to the IESG. 4. Notices to be included in all contributions for publication The following notices should be included in all submissions for publication as an Internet Draft. (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 standards-track and standards-related documentation can be found in BCP-XX. Copies of claims of rights made available for publication and any 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 implementers or users of this specification can be obtained from the IETF on-line IPR repository at http://www.ietf.org/ipr or from the IETF Secretariat." (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 Bradner [Page 5] Internet-Draft IP in IETF Technology February 2002 information to the IETF Secretariat at iesg- secretary@ietf.org." (C) Where the IESG has been made aware at the time of publication of intellectual property rights claimed with respect to an IETF document, or the technology described or referenced therein, such document shall contain the following notice: "The IETF has been notified of intellectual property rights claimed in regard to some or all of the specification contained in this document. For more information consult the online list of claimed rights at http://www.ietf.org/ipr." 5. Definitions 5.1 contribution: See [RFC SUB] section 4.1. 5.2 IETF document: See [RFC SUB] sec 4.4. 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? 6.1.1 IPR claimed by contributors to the IETF Anyone who contributes text, ideas, or technology to the IETF which includes IPR that meets the conditions in section 6.6 and which is reasonably and personally 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 claim. There is no situation where IPR claim meeting the description in this Bradner [Page 6] Internet-Draft IP in IETF Technology February 2002 section does not have to be disclosed. 6.1.2. 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 8. 6.1.3. IPR claims known by a 3rd party Under section 3(B) of this document 3rd parties that have information about possible IPR claims related to IETF contributions are invited to notify the IETF by sending an email message to iesg- secretary@ietf.org. Such a notice should be sent as soon as possible after the 3rd party realizes the connection. A 3rd party is defined as someone who knows of IPR claims but who does not meet the conditions in section 6.6. 6.2. The timing of providing disclosure Timely notification of IPR claims is important because working groups need to have as much information as it can while they are evaluating alternative solutions. 6.2.1 Timing of disclosure about a contribution described in section 6.1.1 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. 6.2.2 Timing of disclosure about a contribution described in section 6.1.2 The disclosure must be made as soon as reasonably possible after the realization. 6.2.3 Timing of disclosures based on new knowledge 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. Bradner [Page 7] Internet-Draft IP in IETF Technology February 2002 6.3 How must a disclosure be made? Disclosure of IPR claims is made by sending an email message to iesg- secretary@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 must be as specific as reasonably possible both in the IPR claim that is being made and as to the IETF contributions to which the claim applies. The disclosure should list the registration numbers of any patents and the file numbers of any patent applications which instantiate the IPR claims being made. If the claim is based on unpublished patent applications then that should be stated. The disclosure should also list the specific IETF documents or activity affected and what sections of any documents are affected. (SHOULD WE PUT UP A DISCLOSURE TEMPLATE?) 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 non- discriminatory terms for the same reason. 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 it is desirable, though not required, that an IPR disclosure include information about licensing of the IPR in case implementation of the technology described in the final RFC is judged to require a license. It should be noted that disclosures without licensing statements are likely to discourage a working group from adopting the technology. The following are examples of licensing terms used in past disclosures to the IETF. These examples are provided for information and are not meant to recommend any of these particular terms. a/ Free License: The IPR claimant will grant any applicant a non- exclusive, worldwide, perpetual, irrevocable, royalty-free license to make, use, sell, import and exercise all other rights with respect to products or processes covered by the listed IPR. The terms of this license are available for review on the IPR claimant's web site. b/ Restricted open license: The IPR claimant offers a Free License to the IPR under certain constraints. Constraints that have been seen in the past include a restriction of the free licenses to Bradner [Page 8] Internet-Draft IP in IETF Technology February 2002 only cover implementations of a specific IETF RFC or that limit the Free Licenses to people or organizations who do not try to limit the ability IPR claimant to implement the same specific RFC because of other IPR claims. See [RFC 1822] and [RFC 1988] for examples. c/ fair and non discriminatory terms: The IPR claimant offers to license the technology under fair and non-discriminatory terms. d/ a refusal to license: The IPR claimant will refuse to license the technology. 6.6 When is a disclosure required? Disclosures are required whenever enforcement of the IPR claim in question would directly or indirectly benefit the individual or their employer or sponsor (if any) and where enforcement of the claimed IPR would have any effect on the ability to implement a technology under discussion in the IETF. 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 6.1.2.) 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 "reasonably and personally known" mean? The phrase "reasonably and personally 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 an organization to perform a patent search every time one of its employees submits an Internet Draft or participates in a working group discussion. 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 reasonably and personally Bradner [Page 9] Internet-Draft IP in IETF Technology February 2002 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 reasonably and personally known to the individual is a violation of IETF process. 9. Evaluating alternative technologies in an IETF working group In general, it can be assumed that IETF working groups will prefer technologies with no known IPR claims or, for technologies with claims, an offer of 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. It should also be noted that the absence of IPR claims is not the same thing as the knowledge that there will be no such claims in the future. People or organizations not currently involved in the IETF or organizations who 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. 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 Bradner [Page 10] Internet-Draft IP in IETF Technology February 2002 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 4.1.2 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 3.3.3 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 claims must be submitted as described in section 6. Specific IPR claims should not be in the affected documents because the reader can 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 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 security with IPR procedures. 14. References 15.1 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 Bradner [Page 11] Internet-Draft IP in IETF Technology February 2002 Procedures", RFC 2518, September 1998 [IETF SUB] work in progress: draft-iprwg-submission-00.txt 14.2 Informative references [RFC 1790] Cerf, V., "An Agreement between the Internet Society and Sun Microsystems, Inc. in the Matter of ONC RPC and XDR Protocols", RFC 1790, April 1995 [RFC 1822] Lowe, J., "A Grant of Rights to Use a Specific IBM patent with Photuris", RFC 1822, August 1995 [1988] McAnally, G., D. Gilbert, J. Flick, "Conditional Grant of Rights to Specific Hewlett-Packard Patents In Conjunction With the Internet Engineering Task Force's Internet-Standard Network Management Framework", RFC 1988, August 1996 [RFC 2339] The Internet Society, Sun Microsystems, "An Agreement Between the Internet Society, the IETF, and Sun Microsystems, Inc. in the matter of NFS V.4 Protocols" 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, 02138 sob@harvard.edu +1 617 495 3864 17. Full copyright statement: Copyright (C) The Internet Society (2002). 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 Bradner [Page 12] Internet-Draft IP in IETF Technology February 2002 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 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) sec 1 b - add "following normal processes" sec 1 c - reword sec 2.2.1 - add "if the contribution is an Internet Draft" sec 6 - largely reworked sec 6.7 - added call for IPR with WG & IETF last calls sec 7 - add "or participates in a working group discussion" sec 8 - add "or other factors" sec 14 - redo security considerations sec 15 - added acknowledgements sec 18 - added change log Bradner [Page 13] \.