Network Working Group S. Bradner Internet-Draft Harvard U. Editor April 2003 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, relative to technologies developed in the IETF are designed to ensure that IETF working groups and participants have as much 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. This memo updates RFC 2026 and, with RFC XXXY, replaces Section 10 of RFC 2026. [note to RFC editor - replace XXXY with number of IETF SUB] Copyright (C) The Internet Society (2003) 1. Introduction Bradner [Page 1] Internet-Draft IP in IETF Technology April 2003 In the years since RFC 2026 was published there have been a number of times when the exact intent of Section 10, the section which deals with IPR disclosures has been the subject of vigorous debate within the IETF community. This is because it is becoming increasingly common for IETF working groups to have to deal with claims of intellectual property rights (IPR), such as patent rights, with regards to technology under discussion in working groups. The aim of this ID 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. IPR disclosures can come at any point in the IETF process, e.g., before the first Internet-Draft has been submitted, prior to RFC publication, or after an RFC has been published and the working group has been closed down; they 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 third parties who find out that the work is going or has gone on; and they can be based on granted patents or on patent applications, and in some cases be disingenuous, i.e., made to affect the standards process rather than to inform. RFC 2026 section 10 established three basic principles 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 disclosures 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 the working group's discussions must disclose the existence of any IPR claim that covers the technology under discussion. This applies to both contributors and other participants, and applies whether they contribute in person, via email or by other means. The requirement covers all IPR of the contributor, the contributor's employer, sponsor, or others represented by the contributors, that is reasonably and personally known to the person submitting the disclosure. No patent search is required. Sections 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 document, and sections 6 thru 12 then explain the rationale for these provisions, including some of the clarifications that have been made since the adoption of RFC 2026. The rules and procedures set out in this document are not Bradner [Page 2] Internet-Draft IP in IETF Technology April 2003 intended to modify or alter the IETF's current policy toward IPR in the context of the IETF standards process. They 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. Readers are advised to consult their own legal advisors if they would like a legal interpretation of their rights or the rights of the IETF in any contributions they make. 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, and each named co-contributor, is deemed to agree to the following terms and conditions, on his or her own behalf, and on behalf of the organizations the contributor represents (if any) when submitting the Contribution. A. The Contributor represents that he or she has made all disclosures required by Section 6.1.1 of this document. B. The Contributor represents that there are no limits to the Contributor's ability to make the grants, acknowledgments and agreements herein that are personally and reasonably known to the Contributor. C. If the contribution is an Internet-Draft this agreement must be acknowledged, by including in the "Status of this Memo" section on the first page of the contribution, one of the statements in Section 3.2 of [IETF SUB]. 3. IETF Actions Bradner [Page 3] Internet-Draft IP in IETF Technology April 2003 (A) When any intellectual property is disclosed, with respect to any technology, specification, or standard described in an IETF document in the manner set forth in sec 6 of this document, the IESG shall require that the document has a note indicating the existence of such claimed intellectual property rights. (B) The IESG disclaims any responsibility for identifying the existence of or for evaluating the applicability of any IPR, disclosed or otherwise, to any IETF technology, specification or standard, and will take no position on the validity or scope of any such intellectual property claims. (C) Where intellectual property rights have been disclosed as provided in Section 6 of this document, the IETF Executive Director shall request from the discloser of such rights, a written assurance that upon approval by the IESG for publication as RFCs of the relevant IETF specification(s), all persons will be able to obtain the right to implement, use, distribute and exercise other rights with respect to Implementing Technology under one of the licensing options specified in section 6.5 below 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 disclosed may assist the IETF Executive Director in this effort. The results of this procedure shall not, in themselves, block advancement of a specification or document 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 online. 3.1 No 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 Implementing Technology has been fulfilled in practice. It will instead apply the normal requirements for the advancement of Internet Standards. 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. Note that this also covers the case where multiple implementers have concluded that no licensing is required. This presumption may be challenged at any time, including during the Last-Call period by sending email to the IESG. Bradner [Page 4] Internet-Draft IP in IETF Technology April 2003 4. Notice to be included in RFCs The following notice will be added by the RFC Editor to all standards track RFCs and to all other RFCs for which an IPR disclosure has been received. 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 IETF documents can be found in RFC XX and RFC XY. [note to RFC Editor - replace XX with the number of this document and replace XY with number of IETF SUB.] Copies of IPR disclosures made to the IETF Secretariat 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/. The IETF invites any interested party to bring to its attention any copyrights, patents or patent applications, or other proprietary rights that may cover technology that may be required to implement this standard. Please address the information to the IETF at ietf-ipr@ietf.org." 5. Definitions "Contribution": in the context of this document, a contribution to the IETF is any submission intended by the contributor for publication as an Internet-Draft, RFC or any statements made within the context of an IETF process. Such statements include oral statements in IETF meetings, as well as written and electronic communications made at any time or place, which are addressed to o the IETF plenary session, o any IETF working group or portion thereof, o the IESG, or any member thereof on behalf of the IESG, o the IAB or any member thereof on behalf of the IAB, o any IETF mailing list, including the IETF list itself, any working group or design team list, or any other list functioning under IETF auspices, o the RFC Editor or the Internet-Drafts function Bradner [Page 5] Internet-Draft IP in IETF Technology April 2003 Statements made outside of an IETF meeting, mailing list or other function, that are clearly not intended to be input to an IETF activity, group, or function, are not considered to be Contributions in the context of this document. "Contributors": individuals submitting Contributions "IETF Document": RFCs and Internet-Drafts. "IPR" or "intellectual property rights": means patent, copyright, utility, model, invention registration, database and data rights may Cover an Implementing Technology, whether such rights arise from a registration or renewal thereof, or an application therefore, in each case anywhere in the world. "Implementing Technology": means a technology that implements an IETF specification or standard. "Reasonably and personally known": means something an 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 the IETF Contributor or participant (or his or her represented organization, if any) to perform a patent search to find applicable IPR. "Covers" or "Covered" mean that a valid claim of a patent or a patent application in any jurisdiction or a protected claim, or any other intellectual property right, would necessarily be infringed by the exercise of a right (e.g., making, using, selling, importing, distribution, copying, etc) with respect to an Implementing Technology. 6. IPR Disclosures This section discusses aspects of an obligations associated with IPR disclosure. 6.1 Who must make an IPR disclosure? 6.1.1 A Contributor's IPR in his or her Contribution Any Contributor who reasonably and personally knows of IPR meeting the conditions of Section 6.6 which the Contributor believes Covers or may ultimately Cover his or her Contribution, or which the Contributor reasonably and personally knows his or her employer or Bradner [Page 6] Internet-Draft IP in IETF Technology April 2003 sponsor intends to enforce against Implementing Technologies based on such Contribution, must make a disclosure in accordance with this Section 6. This requirement specifically includes Contributions that are made by any means including electronic or spoken comments. An IPR disclosure should also be made if a revised Contribution negates a previous IPR disclosure. Contributors must disclose IPR meeting the description in this section; there are no exceptions to this rule. 6.1.2. An IETF Participant's IPR in Contributions by others Any individual participating in an IETF discussion who reasonably and personally knows of IPR meeting the conditions of Section 6.6 which the individual believes Covers or may ultimately Cover a Contribution made by another person, or which such IETF participant reasonably and personally knows his or her employer or sponsor intends to assert against Implementing Technologies based on such Contribution, must make a disclosure in accordance with this Section 6. 6.1.3. IPR of Others If a person has information about IPR that may cover IETF Contributions, and such IPR does not meet the requirements of Section 6.6 as to such person, such persons are encouraged to notify the IETF by sending an email message to ietf-ipr@ietf.org. Such a notice should be sent as soon as possible after the person realizes the connection. 6.2. The timing of providing disclosure Timely IPR disclosure is important because working groups need to have as much information as they can while they are evaluating alternative solutions. 6.2.1 Timing of disclosure under section 6.1.1 The Contributor or his or her employer or sponsor (if any) or other organization holding the rights to IPR, must submit an IPR disclosure as soon as reasonably possible after the Contribution is made unless there is already an IETF IPR disclosure by such person(s) on file that covers the Contribution. For example, if the Contribution is an update to a Contribution 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 that changes an existing Contribution such that the revised Contribution is no longer Covered by the disclosed IPR or would be Covered by new or different IPR, then a disclosure must be made. Bradner [Page 7] Internet-Draft IP in IETF Technology April 2003 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 his employer or sponsor or other organization holding rights in the IPR as soon as reasonably possible after the IPR becomes reasonably and personally known to the Contributor. 6.2.2 Timing of disclosure under section 6.1.2 The disclosure must be made as soon as reasonably possible after the IPR becomes reasonably and personally known to the IETF participant. 6.3 How must a disclosure be made? IPR disclosures are made by following the instructions at http://www.ietf.org/ipr-instructions. 6.4 What must be in a disclosure? The disclosure must list the numbers of any issued or published patents or indicate that the claim is based on unpublished patent applications. The disclosure must also list the specific IETF documents or activity affected. An Internet-Draft must be referenced by specific version number. In addition, if an Internet-Draft includes multiple parts and it is not reasonably apparent which part of such Internet-Draft is alleged to be Covered by the IPR in question, the discloser should identify the sections of the Internet- Draft that are alleged to be so Covered. If a disclosure was made on the basis of a patent application (either published or unpublished), a new disclosure must be made upon the publication of a previously unpublished patent application, the abandonment of the application and/or the issuance of a patent thereon. The new disclosure must include the patent number and, if the claims of the granted patent differ from those of the application in manner material to the relevant IETF Contribution, such disclosure must describe any differences in applicability to the IETF Contribution. Note that the requirement for an IPR disclosure is not satisfied by the submission 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 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. However, the requirement for an IPR disclosure is satisfied by a blanket statement of the IPR discloser's willingness to license all its potential IPR meeting the requirements of section 6.6 to implementers of an IETF specification on a royalty- free basis Bradner [Page 8] Internet-Draft IP in IETF Technology April 2003 and other fair and non-discriminatory terms. 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, an IPR disclosure should include information about licensing of the IPR in case Implementing Technologies require a license. Specifically, it should indicate whether, upon approval by the IESG for publication as RFCs of the relevant Internet 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 a) under a royalty-free and otherwise reasonable and non-discriminatory license, or b) under a license that contains reasonable and non-discriminatory terms and conditions, including a reasonable royalty or other payment, or c) without the need to obtain a license from the IPR owner. 6.6 Interest in IPR mandating disclosures IPR disclosures under sections 6.1.1. and 6.1.2 are required with respect to IPR that is owned directly or indirectly, by the individual or his/her employer or sponsor (if any) or that such persons otherwise have the right to license or assert. 7. 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. Since disclosure is required for anyone submitting documents or contributing to IETF discussions, a person who does not disclose IPR for this, or any other reason, must not contribute to these IETF activities with respect to technologies that he or she reasonably and personally knows to be Covered by IPR which he or she is not permitted to disclose. Contributing to IETF discussions about a technology without making required IPR disclosures is a violation of IETF process. 8. Evaluating alternative technologies in IETF working groups In general, IETF working groups prefer technologies with no known IPR claims or, for technologies with claims against them, an offer of royalty-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. Bradner [Page 9] Internet-Draft IP in IETF Technology April 2003 Over the last few years the IETF has adopted stricter requirements for some security technologies. It has become common to have a mandatory-to-implement security technology in IETF technology specifications. This is to ensure that there will be at least one common security technology present in all implementations of such a specification that can be use in all cases. This does not limit the specification from including other security technologies, the use of which could be negotiated between implementations. An IETF consensus has developed that no mandatory-to-implement security should be specified in an IETF specification unless it has no known IPR claims against it or a royalty-free license is available to implementers of the specification unless there is a very good reason to do so. This limitation does not extend to other security technologies in the same specification if they are not listed as mandatory-to- implement. It should also be noted that the absence of IPR disclosures is not the same thing as the knowledge that there will be no IPR claims in the future. People or organizations not currently involved in the IETF. People or organizations that 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. 9. 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. Contributions to the IETF in which the Contributors do not grant change control to the IETF must include the Internet-Draft statement which does not include the right to make derivative works 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 Bradner [Page 10] Internet-Draft IP in IETF Technology April 2003 reference to proprietary technology in some cases, for example, when 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.") 10. 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 disclosed IPR 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 none of the implementers have felt that they needed to license the technology and they have are no indications that any IPR claimant(s) will try to enforce their claims. 11. No IPR disclosures in IETF documents Contributions to the IETF that are subject to IPR disclosures should not contain any mention of specific IPR. All specific IPR disclosures must be submitted as described in section 6. Specific IPR disclosures should not be in the affected IETF documents because the reader could be misled. The inclusion of particular IPR disclosure in an IETF document could be interpreted to mean that the IETF has formed an opinion on the validity of the IPR. The reader could also be mislead to think that the included IPR disclosures are the only IPR disclosures the IETF has received concerning the IETF document. Readers should always refer to the on-line web page to get a full list of IPR disclosures received by the IETF concerning any Contribution. (http://www.ietf.org/ipr/) 12. 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. Bradner [Page 11] Internet-Draft IP in IETF Technology April 2003 References 13.1 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 Procedures", RFC 2518, September 1998 [IETF SUB] work in progress: draft-iprwg-submission-00.txt 13.1 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 2339] IETF & Sun Microsystems, "An Agreement Between the Internet Society, the IETF, and Sun Microsystems, Inc. in the matter of NFS V.4 Protocols", RFC 2339, May 1998 14. 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. 15. Editors Address Scott Bradner Harvard University 29 Oxford St. Cambridge MA, 02138 sob@harvard.edu +1 617 495 3864 16. Full copyright statement: Copyright (C) The Internet Society (2003). 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 included on all such copies and derivative works. However, this Bradner [Page 12] Internet-Draft IP in IETF Technology April 2003 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. 17. change log (note to RFC Editor - remove this section prior to publication) version 00 to version 01 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" .br sec 8 - add "or other factors" sec 14 - redo security considerations sec 15 - added acknowledgements sec 18 - added change log version 01 to version 02 fix miscellaneous typos throughout document swap personally and reasonably change "IPR claim" to "IPR disclosure" a number of places abstract - note update of rfc 2026 sec 1 - remove ISOC sec 1(c) - reword - remove implication disclose of 3rd party IPR sec 2.2.1 - reword - remove 3rd party IPR holders sec 3 (C) - added royalty-free - removed "standards track" remove text about implementations did not add "implicit" Bradner [Page 13] Internet-Draft IP in IETF Technology April 2003 because that is just what the IESG is doing remove "openly specified" sec 3.1 - added note about no licensing case sec 4 - change so RFC Editor adds IPR statements tweak 4(A) so 4(C) could be removed & make it generic to IETF documents sec 5.1 & 5.2 - included definitions from copyright ID sec 6.1.1 - last sentence - reword sec 6.2.1 - append sec 6.2.3 sec 6.2.2 - reword sec 6.3.1 - tweak wording sec 6.4 - replace - add royalty-free add granted patent applications sec 6.5 1st pp - replace - add royalty-free remove example classes sec 6.6 - replace sec 7 - tweak last sentence sec 9 - tweak wording add security RF requirement sec 14.2 - remove unneeded references ver 02 to ver 03 many editing changes throughout document generally changed "claim" to "disclosure" changed the disclosure email addresses and pointed to a web site for instructions sec 2.2.1 A - removed detail - reference sec 6.1.1 remove old sec 7 sec 4 - added definition of covered changed other text to use "covered" sec 5 - changed def of cover sec 6.1.1, 6.1.2 & 6.1.3 - reword open questions: document process for ipr & document advancement ver 03 to ver 04 a number of wording clarifications sec 6.4 2nd pp - removed note of need to state how new IPR applies because that is redundant with filing a new disclosure Bradner [Page 14]