Status request: Membership application...
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Mark W.
Jan 19, 2009, 12:44:35 PM1/19/09
to OpenSocial - OpenSocial Board
Greetings...
Last month, I submitted a membership application to the OpenSocial
Foundation. I was wondering if it would be possible to get a status
on the application. I have not seen any discussion on this group,
received an email, or any other ack and was wondering what's up.
Also, at the December board meeting, Dan was kind enough to bring to
the board's attention that the legal team at IBM had some questions
about the IPR and CLA documents. He indicated that since the OSF's
legal team wasn't present, there wasn't much that could really be
done. I'd like to broker a meeting between our respective legal teams
so the IBM folks can get some clarity on their questions.
Thanks a bunch. I look forward to working with you as we start the
new year!
-Mark W.
IBM Corporation.
Last month, I submitted a membership application to the OpenSocial
Foundation. I was wondering if it would be possible to get a status
on the application. I have not seen any discussion on this group,
received an email, or any other ack and was wondering what's up.
Also, at the December board meeting, Dan was kind enough to bring to
the board's attention that the legal team at IBM had some questions
about the IPR and CLA documents. He indicated that since the OSF's
legal team wasn't present, there wasn't much that could really be
done. I'd like to broker a meeting between our respective legal teams
so the IBM folks can get some clarity on their questions.
Thanks a bunch. I look forward to working with you as we start the
new year!
-Mark W.
IBM Corporation.
Dan Peterson
Jan 20, 2009, 6:57:50 PM1/20/09
to opensoci...@googlegroups.com, Mark W.
Hi Mark,
Thanks for reaching out. I appreciate your work in helping IBM as a whole get involved with OpenSocial.
On the topic of your personal membership application, you should hear back by the end of this week (but there isn't any reason to worry). Apologies for the delay -- last November's election and the December holidays have caused our process to be a bit irregular -- and we're now into our regular process. I should also clarify that the foundation membership is actually made up of individual members -- rather than corporations. It is possible that there will be a process for corporations to sponsor or otherwise become part of the foundation in the future, but that is TBD.
As for IBM's comments on the existing OpenSocial Foundation IPR process, I think it would be helpful for the board if you provided written detailed feedback. This will allow the board to confer with the legal team about any appropriate next steps.
Thanks,
-Dan
Mark W.
Jan 23, 2009, 3:38:51 PM1/23/09
to OpenSocial - OpenSocial Board
Dan,
Thank you for taking the time to review my membership application. I
look forward to becoming more involved in the OpenSocial Foundation.
Based on the request in your last note, I’ve put together our
questions on the IPR policy (included below). Hopefully, these make
sense to you and the legal team. Again, I’d be happy to arrange a
conference call et. if a conversation would help clarify these
questions or bring about an answer more quickly.
Thanks again for all your help.
-Mark W.
----
5.2 Limited Patent Promise
In this section, do you mean to indicate that the only way to address
the patent transfer matter is to contractually require the assignee to
honor the non-assert and flow down a similar obligation on the
assignee's subsequent assignees? There may be other ways to achieve
the same result, for example, by reserving rights to grant licenses
that assignor has previously committed to. Where companies may be in
many standards and groups and where patents may be assigned without
knowing they are applicable to OpenSocial or some other group, should
the Policy limit the mechanism for achieving the desired result?
Wouldn’t a permissive way (that achieves similar effects) be an
easier, more effective way for OpenSocial members to address this
concern? Interestingly, this may not be limited to the sale of
patents, but could also apply to a company that spins off a business
that includes IP.
5.4 Jointly owned patents
In many countries, either patent owner can license others without
consent and without accounting to other owners. In many agreements
relating to joint inventions, a similar situation applies. So, this
section in effect changes existing rights to give each owner the right
to veto the other owners' rights to license. What might be of concern
with this provision is that it, in effect, excludes such jointly
owned patents from the definition of Necessary Claim. Since no party
has the "right...to grant licenses" as required in the Necessary Claim
definition -- because each owner needs consent of the others -- these
joint claims are not subject to the non-assert commitment. Is that
what is intended here? Also, does the OSF intend, by this language, to
control joint owner actions outside the scope of OSF -- where the
patents may be used in other fields? Is it intended that one patent
holder should be allowed to veto licensing efforts of others?
Related Entities or Affiliates
Since OSF only obligates signatories to providing commitments on
necessary patents, what happens if the signatory to the OSF membership
agreement is an individual who is employed or paid by a big company
with a rich portfolio? Under these circumstances, it’s often the case
that the employee automatically assigns ownership to any patents they
create. Because of this, it may not be possible for the signatory to
promise the patents of his employer.
A similar form of relationship often exists between parent companies
and subsidiaries, where the parent is assigned ownership of the
patents. When a company has a large patent portfolio, they would be
encouraged to allow only subsidiaries to join OSF, thereby protecting
their IP because subsidiaries usually can’t obligate its parent.
Many standards organizations have addressed this by including the
requirement that all Affiliates be obligated. Since the concept of
affiliates is incorporated in OSF’s definition of Related Entities,
shouldn’t Related Entities be bound to the commitment? Even in the
OSF Initial Specification Patent Non Assert agreement, it only
obligates those entities that you can legally bind, which easily may
exclude your parent.
Candidly, IBM has a large patent portfolio that may insulate us if a
patent is asserted. However, for the success of OSF, we wonder whether
it makes sense for small (and large) members to accept the risk of
being accused of infringing patents held by a related entity to a
signatory without those related entities being bound by section 5.2.
7 Withdrawal of Contributions
My reading of the current wording seems to indicate that it would
allow a Contributor to avoid the patent licensing obligation of 5.2 if
such Contributor withdraws prior to a Specification he has worked on
is published by the Foundation. If such Contributor withdraws from a
WG prior to publication, does this release him from providing a patent
license to any part of the Specification? Does it relieve him of the
obligation to license any of his own claims made necessary by
contributions he knowingly made to the work group? This may make
sense if he withdraws to avoid a licensing obligation against his
patent which has been made necessary by someone else’s Contribution,
but would it be useful if he identified the section of the
specification which he is not willing to provide a non assert
assurance for a Necessary Claim? It’s important for the OpenSocial
community to have the opportunity to “work around” the section that
needs the patent for which the withdrawing member will not agree to
provide the assurance. This would help all members of OpenSocial and
would help ensure the open, transparent nature of the community.
---
Thank you for taking the time to review my membership application. I
look forward to becoming more involved in the OpenSocial Foundation.
Based on the request in your last note, I’ve put together our
questions on the IPR policy (included below). Hopefully, these make
sense to you and the legal team. Again, I’d be happy to arrange a
conference call et. if a conversation would help clarify these
questions or bring about an answer more quickly.
Thanks again for all your help.
-Mark W.
----
5.2 Limited Patent Promise
In this section, do you mean to indicate that the only way to address
the patent transfer matter is to contractually require the assignee to
honor the non-assert and flow down a similar obligation on the
assignee's subsequent assignees? There may be other ways to achieve
the same result, for example, by reserving rights to grant licenses
that assignor has previously committed to. Where companies may be in
many standards and groups and where patents may be assigned without
knowing they are applicable to OpenSocial or some other group, should
the Policy limit the mechanism for achieving the desired result?
Wouldn’t a permissive way (that achieves similar effects) be an
easier, more effective way for OpenSocial members to address this
concern? Interestingly, this may not be limited to the sale of
patents, but could also apply to a company that spins off a business
that includes IP.
5.4 Jointly owned patents
In many countries, either patent owner can license others without
consent and without accounting to other owners. In many agreements
relating to joint inventions, a similar situation applies. So, this
section in effect changes existing rights to give each owner the right
to veto the other owners' rights to license. What might be of concern
with this provision is that it, in effect, excludes such jointly
owned patents from the definition of Necessary Claim. Since no party
has the "right...to grant licenses" as required in the Necessary Claim
definition -- because each owner needs consent of the others -- these
joint claims are not subject to the non-assert commitment. Is that
what is intended here? Also, does the OSF intend, by this language, to
control joint owner actions outside the scope of OSF -- where the
patents may be used in other fields? Is it intended that one patent
holder should be allowed to veto licensing efforts of others?
Related Entities or Affiliates
Since OSF only obligates signatories to providing commitments on
necessary patents, what happens if the signatory to the OSF membership
agreement is an individual who is employed or paid by a big company
with a rich portfolio? Under these circumstances, it’s often the case
that the employee automatically assigns ownership to any patents they
create. Because of this, it may not be possible for the signatory to
promise the patents of his employer.
A similar form of relationship often exists between parent companies
and subsidiaries, where the parent is assigned ownership of the
patents. When a company has a large patent portfolio, they would be
encouraged to allow only subsidiaries to join OSF, thereby protecting
their IP because subsidiaries usually can’t obligate its parent.
Many standards organizations have addressed this by including the
requirement that all Affiliates be obligated. Since the concept of
affiliates is incorporated in OSF’s definition of Related Entities,
shouldn’t Related Entities be bound to the commitment? Even in the
OSF Initial Specification Patent Non Assert agreement, it only
obligates those entities that you can legally bind, which easily may
exclude your parent.
Candidly, IBM has a large patent portfolio that may insulate us if a
patent is asserted. However, for the success of OSF, we wonder whether
it makes sense for small (and large) members to accept the risk of
being accused of infringing patents held by a related entity to a
signatory without those related entities being bound by section 5.2.
7 Withdrawal of Contributions
My reading of the current wording seems to indicate that it would
allow a Contributor to avoid the patent licensing obligation of 5.2 if
such Contributor withdraws prior to a Specification he has worked on
is published by the Foundation. If such Contributor withdraws from a
WG prior to publication, does this release him from providing a patent
license to any part of the Specification? Does it relieve him of the
obligation to license any of his own claims made necessary by
contributions he knowingly made to the work group? This may make
sense if he withdraws to avoid a licensing obligation against his
patent which has been made necessary by someone else’s Contribution,
but would it be useful if he identified the section of the
specification which he is not willing to provide a non assert
assurance for a Necessary Claim? It’s important for the OpenSocial
community to have the opportunity to “work around” the section that
needs the patent for which the withdrawing member will not agree to
provide the assurance. This would help all members of OpenSocial and
would help ensure the open, transparent nature of the community.
---
Dan Peterson
Feb 3, 2009, 2:55:39 PM2/3/09
to opensoci...@googlegroups.com, Mark W.
Hi Mark,
Thanks for sending in these comments. I'm glad to see that IBM has taken such a close look at the existing IPR policy, and consider that a positive indicator towards IBM getting involved and contributing. Along those lines, it'd be great for the board to learn more about how IBM intends to contribute and which products are exploring use of the OpenSocial specification (and how). If you can share any specifics there, that would be great.
Everyone, if you haven't already, can you work with your respective legal teams to review the comments Mark sent below so we can discuss any potential next steps?
Mark, additionally, the OpenSocial Foundation is getting quite close to having the contributor licensing agreements (CLAs) finalized -- the latest are attached to this note. I wanted to share these "approaching complete" drafts with you (especially the corporate version), in case you have any quick comments that would improve the documents (full disclosure: we can't commit to accepting all suggestions, since we intend to get all comments closed out quite soon).
Regards,
-Dan
Mark W.
Feb 3, 2009, 11:07:49 PM2/3/09
to OpenSocial - OpenSocial Board
Dan,
Thanks for encouraging the board to take a look at these questions--
I'm excited at the prospect of making some headway. At this point, it
would be a bit premature to talk about specific products that are
considering OpenSocial, primarily because of IBM's policies regarding
commenting on future plans. Thanks for the CLAs. I'll start
reviewing them with the folks here and get back to you. It would be
helpful to know what kind of time frame you have to try and get these
out so we can do our best to get you some feedback. Bst case, I'm
going to need at least several days on my end. Realistically, I think
this will be early next week before I can get comments back to you on
the CLAs.
Thanks again, and thanks in advance to the rest of the board members
for your time.
-Mark W.
> 42KViewDownload
>
> OSF-CLA-Corporate-1.30.09.doc
> 40KViewDownload
Thanks for encouraging the board to take a look at these questions--
I'm excited at the prospect of making some headway. At this point, it
would be a bit premature to talk about specific products that are
considering OpenSocial, primarily because of IBM's policies regarding
commenting on future plans. Thanks for the CLAs. I'll start
reviewing them with the folks here and get back to you. It would be
helpful to know what kind of time frame you have to try and get these
out so we can do our best to get you some feedback. Bst case, I'm
going to need at least several days on my end. Realistically, I think
this will be early next week before I can get comments back to you on
the CLAs.
Thanks again, and thanks in advance to the rest of the board members
for your time.
-Mark W.
> Thanks for sending in these comments. I'm glad to see that IBM has taken
> such a close look at the existing IPR policy, and consider that a positive
> indicator towards IBM getting involved and contributing. Along those lines,
> it'd be great for the board to learn more about how IBM intends to
> contribute and which products are exploring use of the OpenSocial
> specification (and how). If you can share any specifics there, that would be
> great.
>
> Everyone, if you haven't already, can you work with your respective legal
> teams to review the comments Mark sent below so we can discuss any potential
> next steps?
>
> Mark, additionally, the OpenSocial Foundation is getting quite close to
> having the contributor licensing agreements (CLAs) finalized -- the latest
> are attached to this note. I wanted to share these "approaching complete"
> drafts with you (especially the corporate version), in case you have any
> quick comments that would improve the documents (full disclosure: we can't
> commit to accepting all suggestions, since we intend to get all comments
> closed out quite soon).
>
> Regards,
> -Dan
>
> such a close look at the existing IPR policy, and consider that a positive
> indicator towards IBM getting involved and contributing. Along those lines,
> it'd be great for the board to learn more about how IBM intends to
> contribute and which products are exploring use of the OpenSocial
> specification (and how). If you can share any specifics there, that would be
> great.
>
> Everyone, if you haven't already, can you work with your respective legal
> teams to review the comments Mark sent below so we can discuss any potential
> next steps?
>
> Mark, additionally, the OpenSocial Foundation is getting quite close to
> having the contributor licensing agreements (CLAs) finalized -- the latest
> are attached to this note. I wanted to share these "approaching complete"
> drafts with you (especially the corporate version), in case you have any
> quick comments that would improve the documents (full disclosure: we can't
> commit to accepting all suggestions, since we intend to get all comments
> closed out quite soon).
>
> Regards,
> -Dan
>
> > > On Mon, Jan 19, 2009 at 9:44 AM, Mark W. <weitz...@us.ibm.com> wrote:
>
> > > > Greetings...
>
> > > > Last month, I submitted a membership application to the OpenSocial
> > > > Foundation. I was wondering if it would be possible to get a status
> > > > on the application. I have not seen any discussion on this group,
> > > > received an email, or any other ack and was wondering what's up.
>
> > > > Also, at the December board meeting, Dan was kind enough to bring to
> > > > the board's attention that the legal team at IBM had some questions
> > > > about the IPR and CLA documents. He indicated that since the OSF's
> > > > legal team wasn't present, there wasn't much that could really be
> > > > done. I'd like to broker a meeting between our respective legal teams
> > > > so the IBM folks can get some clarity on their questions.
>
> > > > Thanks a bunch. I look forward to working with you as we start the
> > > > new year!
>
> > > > -Mark W.
> > > > IBM Corporation.
>
>
>
> OSF-CLA-Individual-FINAL 1.30.09.doc
>
> > > > Greetings...
>
> > > > Last month, I submitted a membership application to the OpenSocial
> > > > Foundation. I was wondering if it would be possible to get a status
> > > > on the application. I have not seen any discussion on this group,
> > > > received an email, or any other ack and was wondering what's up.
>
> > > > Also, at the December board meeting, Dan was kind enough to bring to
> > > > the board's attention that the legal team at IBM had some questions
> > > > about the IPR and CLA documents. He indicated that since the OSF's
> > > > legal team wasn't present, there wasn't much that could really be
> > > > done. I'd like to broker a meeting between our respective legal teams
> > > > so the IBM folks can get some clarity on their questions.
>
> > > > Thanks a bunch. I look forward to working with you as we start the
> > > > new year!
>
> > > > -Mark W.
> > > > IBM Corporation.
>
>
>
> 42KViewDownload
>
> OSF-CLA-Corporate-1.30.09.doc
> 40KViewDownload
Dan Peterson
Feb 4, 2009, 5:10:51 PM2/4/09
to opensoci...@googlegroups.com, Mark D Weitzel
Hi Mark,
I understand the hesitation about discussing future product plans -- I mentioned it as it was something the board had previously wondered about in order to gather context and perspective for reviewing the comments IBM has on the existing IPR process.
As for the CLAs, to be totally transparent, we are planning to close out comments by the end of this week.
Cheers,
-Dan
Mark W.
Feb 5, 2009, 11:47:26 AM2/5/09
to OpenSocial - OpenSocial Board
Dan,
Thanks for the heads up. No guarantees, but I'll try to get you
something by Friday.
-Mark W.
> ...
>
> read more »
Thanks for the heads up. No guarantees, but I'll try to get you
something by Friday.
-Mark W.
> I understand the hesitation about discussing future product plans -- I
> mentioned it as it was something the board had previously wondered about in
> order to gather context and perspective for reviewing the comments IBM has
> on the existing IPR process.
>
> As for the CLAs, to be totally transparent, we are planning to close out
> comments by the end of this week.
>
> Cheers,
> -Dan
>
> mentioned it as it was something the board had previously wondered about in
> order to gather context and perspective for reviewing the comments IBM has
> on the existing IPR process.
>
> As for the CLAs, to be totally transparent, we are planning to close out
> comments by the end of this week.
>
> Cheers,
> -Dan
>
>
> read more »
Dan Peterson
Feb 5, 2009, 12:01:09 PM2/5/09
to opensoci...@googlegroups.com, Mark D Weitzel
Sounds good.
-Dan
Mark W.
Feb 9, 2009, 8:58:49 PM2/9/09
to OpenSocial - OpenSocial Board
Dan et al.,
Would you be kind enough to provide an update regarding where you are
in reviewing the legal questions I posted regarding the OpenSocial
Foundation’s IPR policy, as well as a date by which these questions
will be addressed? Aside from the post from Dan, which was nothing
more than an acknowledgement, I’ve seen no comment on these issues. I
am more than willing to work with the Board to get these questions
addressed as quickly as possible. Of course, I would be more than
happy to coordinate a call with whomever necessary from the OSF so we
have the right forum to discuss these issues.
Thanks,
-Mark W.
Would you be kind enough to provide an update regarding where you are
in reviewing the legal questions I posted regarding the OpenSocial
Foundation’s IPR policy, as well as a date by which these questions
will be addressed? Aside from the post from Dan, which was nothing
more than an acknowledgement, I’ve seen no comment on these issues. I
am more than willing to work with the Board to get these questions
addressed as quickly as possible. Of course, I would be more than
happy to coordinate a call with whomever necessary from the OSF so we
have the right forum to discuss these issues.
Thanks,
-Mark W.
> Thanks for sending in these comments. I'm glad to see that IBM has taken
> such a close look at the existing IPR policy, and consider that a positive
> indicator towards IBM getting involved and contributing. Along those lines,
> it'd be great for the board to learn more about how IBM intends to
> contribute and which products are exploring use of the OpenSocial
> specification (and how). If you can share any specifics there, that would be
> great.
>
> Everyone, if you haven't already, can you work with your respective legal
> teams to review the comments Mark sent below so we can discuss any potential
> next steps?
>
> Mark, additionally, the OpenSocial Foundation is getting quite close to
> having the contributor licensing agreements (CLAs) finalized -- the latest
> are attached to this note. I wanted to share these "approaching complete"
> drafts with you (especially the corporate version), in case you have any
> quick comments that would improve the documents (full disclosure: we can't
> commit to accepting all suggestions, since we intend to get all comments
> closed out quite soon).
>
> Regards,
> -Dan
>
> such a close look at the existing IPR policy, and consider that a positive
> indicator towards IBM getting involved and contributing. Along those lines,
> it'd be great for the board to learn more about how IBM intends to
> contribute and which products are exploring use of the OpenSocial
> specification (and how). If you can share any specifics there, that would be
> great.
>
> Everyone, if you haven't already, can you work with your respective legal
> teams to review the comments Mark sent below so we can discuss any potential
> next steps?
>
> Mark, additionally, the OpenSocial Foundation is getting quite close to
> having the contributor licensing agreements (CLAs) finalized -- the latest
> are attached to this note. I wanted to share these "approaching complete"
> drafts with you (especially the corporate version), in case you have any
> quick comments that would improve the documents (full disclosure: we can't
> commit to accepting all suggestions, since we intend to get all comments
> closed out quite soon).
>
> Regards,
> -Dan
>
> > > On Mon, Jan 19, 2009 at 9:44 AM, Mark W. <weitz...@us.ibm.com> wrote:
>
> > > > Greetings...
>
> > > > Last month, I submitted a membership application to the OpenSocial
> > > > Foundation. I was wondering if it would be possible to get a status
> > > > on the application. I have not seen any discussion on this group,
> > > > received an email, or any other ack and was wondering what's up.
>
> > > > Also, at the December board meeting, Dan was kind enough to bring to
> > > > the board's attention that the legal team at IBM had some questions
> > > > about the IPR and CLA documents. He indicated that since the OSF's
> > > > legal team wasn't present, there wasn't much that could really be
> > > > done. I'd like to broker a meeting between our respective legal teams
> > > > so the IBM folks can get some clarity on their questions.
>
> > > > Thanks a bunch. I look forward to working with you as we start the
> > > > new year!
>
> > > > -Mark W.
> > > > IBM Corporation.
>
>
>
>
> > > > Greetings...
>
> > > > Last month, I submitted a membership application to the OpenSocial
> > > > Foundation. I was wondering if it would be possible to get a status
> > > > on the application. I have not seen any discussion on this group,
> > > > received an email, or any other ack and was wondering what's up.
>
> > > > Also, at the December board meeting, Dan was kind enough to bring to
> > > > the board's attention that the legal team at IBM had some questions
> > > > about the IPR and CLA documents. He indicated that since the OSF's
> > > > legal team wasn't present, there wasn't much that could really be
> > > > done. I'd like to broker a meeting between our respective legal teams
> > > > so the IBM folks can get some clarity on their questions.
>
> > > > Thanks a bunch. I look forward to working with you as we start the
> > > > new year!
>
> > > > -Mark W.
> > > > IBM Corporation.
>
>
>
Joseph Smarr
Feb 17, 2009, 8:33:57 PM2/17/09
to opensoci...@googlegroups.com
Hi, sorry to jump in late to this thread, but Mark, I think the honest answer is this: it's quite costly and time-consuming and distracting any time we have to engage our lawyers to review and change our core legal documents, not to mention then having to get agreement again from large variety of existing OpenSocial partners, so we're prone to be a bit slow and reticent to do so. And since we still haven't heard much if anything from IBM about whether/how IBM is offering/planning to contribute to OpenSocial (correct me if I'm wrong), it's all the less easy to get everyone motivated to dive into that work without a clear sense of the potential upside. '
Obviously, we'd love to have IBM involved if possible, and since we've already gotten agreement on the existing legal text from a bunch of large players, I figure what we have in place today must not be *too* bad, so I'm optimistic we can make something work here. And if you want to help "stoke the flames" here, I'd suggest a combined strategy of a) trying to change as little as possible of the existing legal docs, and b) trying to entice us as much as possible with the specific vision/plan of how making changes will help IBM contribute to OpenSocial. :)
Thanks, js
Obviously, we'd love to have IBM involved if possible, and since we've already gotten agreement on the existing legal text from a bunch of large players, I figure what we have in place today must not be *too* bad, so I'm optimistic we can make something work here. And if you want to help "stoke the flames" here, I'd suggest a combined strategy of a) trying to change as little as possible of the existing legal docs, and b) trying to entice us as much as possible with the specific vision/plan of how making changes will help IBM contribute to OpenSocial. :)
Thanks, js
Mark W.
Feb 27, 2009, 9:43:38 AM2/27/09
to OpenSocial - OpenSocial Board
Joeseph,
Thanks for jumping in. I think we are all on the same page here and
your "combined strategy" is a good idea. Please keep in mind we are
not suggesting a complete overhaul of the existing IPR policy--that
was never the case. In fact, we've been able to address our two key
issues, the transfer of patent rights and the joint ownership of
patents, with some very minor changes to the existing wording. For
part "a" of the combined strategy, I've added a section below with the
parts of the IPR that have suggested wording.
I'd be happy to talk about part "b" during the Board meeting today.
Please keep in mind that as I've mentioned before, I won't be able to
provide product specifics, e.g. "X" will ship OpenSocial in June. IBM
has very strict guidelines on that sort of thing--not that I've ever
learned the hard way or anything. I plan to reiterate IBM's overall
commitment to openness and talk--at a high level--about the areas in
our product portfolio where we believe having an open specification
related to social networks makes sense. I'll provide some of the
rationale behind our thinking and where there are potential areas for
us to contribute as we begin working together. Even though this will
be at a high level, I'm hopeful this will satisfy your request for
part "b".
Hope this helps....
-Mark W.
---- Minor Suggestions for IPR ----
Additions are surrounded with "**". Strike through is surrounded with
"--". Even though these are very minor changes, it turned out to be
kind of hard to read in the post. I will send Dan a PDF that he can
attach if possible.
Suggestions for section 5.2:
I hereby irrevocably promise not to assert any Necessary Claims
against any person (individual, entity or otherwise) ("you") for
making, having made, using, selling, offering for sale, importing, or
distributing any product or service solely to the extent it contains
or uses a Compliant Portion. This is a personal promise directly from
me to you, and you acknowledge as a condition of benefiting from it
that no rights are granted and no promises are made by me to your
suppliers (other than to your manufacturers pursuant to an exercise of
your have made rights), distributors, or otherwise in connection with
this promise. Notwithstanding the personal nature of my promise, I
acknowledge and agree that this promise is intended to run with any
patents and patent applications containing Necessary Claims and to be
binding on any future owner, assignee or exclusive licensee (who has
been given the right to enforce any Necessary Claims against third
parties) of any such patents or patent applications. Before or at
the same time I assign (other than to an Acquirer, as defined below)
or grant an exclusive license of the type described above to any
patent or patent application containing Necessary Claims to any third
party (including, without limitation, to a Related Entity or other
corporate affiliate), I shall **either** (a) notify and contractually
require the assignee or licensee, as applicable, to honor the non-
assertion promise with respect to such Necessary Claims, and --(b)--
flow down a similar requirement on the assignee's or licensee's own
subsequent assignees or licensees, as applicable; **or (b) utilize
another method that will achieve the objective of providing subsequent
implementers the patent rights necessary for their implementation,
which rights would be substantially equivalent in result** to the
promise **which** would otherwise be binding upon me in the absence of
such assignment or license.
Suggestions for section 5.4:
5.4. Patent Rights in Joint Developments. When two or more
Contributors --("Joint Patent Rights")-- each make a contribution to
the conception of a patentable invention in the course of activities
governed by this Policy **(“Joint Contributors”)**, such Joint
Contributors will jointly own the patent rights arising therefrom
("Joint Patent Rights"), and each Joint Contributor hereby assigns and
agrees to assign to the other such Joint Contributor(s) an equal,
undivided interest therein.
**In jurisdictions that legally require the permission of Joint
Contributors**, no such Joint Contributor shall have the right to
grant any license or forbearance under any of the Joint Patent Rights
to third parties (other than its Related Entities) unless unanimous
written consent is given by the other Joint Contributors, except that,
each such Contributor (and its Related Entities, subsidiaries, and any
third parties referenced in Section 2.2) is free to **make, have made,
use, sell, offer for sale, import**, practice **and otherwise transfer
products, technology and/or services under** the Joint Patent Rights
--for itself/themselves-- with no duty to notify or account to the
other Joint Contributors. Each Party hereby agrees, during and after
the term of this Agreement, to execute any document reasonably
requested to perfect another Joint Contributor?s patent rights as set
forth pursuant to this Agreement.
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Thanks for jumping in. I think we are all on the same page here and
your "combined strategy" is a good idea. Please keep in mind we are
not suggesting a complete overhaul of the existing IPR policy--that
was never the case. In fact, we've been able to address our two key
issues, the transfer of patent rights and the joint ownership of
patents, with some very minor changes to the existing wording. For
part "a" of the combined strategy, I've added a section below with the
parts of the IPR that have suggested wording.
I'd be happy to talk about part "b" during the Board meeting today.
Please keep in mind that as I've mentioned before, I won't be able to
provide product specifics, e.g. "X" will ship OpenSocial in June. IBM
has very strict guidelines on that sort of thing--not that I've ever
learned the hard way or anything. I plan to reiterate IBM's overall
commitment to openness and talk--at a high level--about the areas in
our product portfolio where we believe having an open specification
related to social networks makes sense. I'll provide some of the
rationale behind our thinking and where there are potential areas for
us to contribute as we begin working together. Even though this will
be at a high level, I'm hopeful this will satisfy your request for
part "b".
Hope this helps....
-Mark W.
---- Minor Suggestions for IPR ----
Additions are surrounded with "**". Strike through is surrounded with
"--". Even though these are very minor changes, it turned out to be
kind of hard to read in the post. I will send Dan a PDF that he can
attach if possible.
Suggestions for section 5.2:
I hereby irrevocably promise not to assert any Necessary Claims
against any person (individual, entity or otherwise) ("you") for
making, having made, using, selling, offering for sale, importing, or
distributing any product or service solely to the extent it contains
or uses a Compliant Portion. This is a personal promise directly from
me to you, and you acknowledge as a condition of benefiting from it
that no rights are granted and no promises are made by me to your
suppliers (other than to your manufacturers pursuant to an exercise of
your have made rights), distributors, or otherwise in connection with
this promise. Notwithstanding the personal nature of my promise, I
acknowledge and agree that this promise is intended to run with any
patents and patent applications containing Necessary Claims and to be
binding on any future owner, assignee or exclusive licensee (who has
been given the right to enforce any Necessary Claims against third
parties) of any such patents or patent applications. Before or at
the same time I assign (other than to an Acquirer, as defined below)
or grant an exclusive license of the type described above to any
patent or patent application containing Necessary Claims to any third
party (including, without limitation, to a Related Entity or other
corporate affiliate), I shall **either** (a) notify and contractually
require the assignee or licensee, as applicable, to honor the non-
assertion promise with respect to such Necessary Claims, and --(b)--
flow down a similar requirement on the assignee's or licensee's own
subsequent assignees or licensees, as applicable; **or (b) utilize
another method that will achieve the objective of providing subsequent
implementers the patent rights necessary for their implementation,
which rights would be substantially equivalent in result** to the
promise **which** would otherwise be binding upon me in the absence of
such assignment or license.
Suggestions for section 5.4:
5.4. Patent Rights in Joint Developments. When two or more
Contributors --("Joint Patent Rights")-- each make a contribution to
the conception of a patentable invention in the course of activities
governed by this Policy **(“Joint Contributors”)**, such Joint
Contributors will jointly own the patent rights arising therefrom
("Joint Patent Rights"), and each Joint Contributor hereby assigns and
agrees to assign to the other such Joint Contributor(s) an equal,
undivided interest therein.
**In jurisdictions that legally require the permission of Joint
Contributors**, no such Joint Contributor shall have the right to
grant any license or forbearance under any of the Joint Patent Rights
to third parties (other than its Related Entities) unless unanimous
written consent is given by the other Joint Contributors, except that,
each such Contributor (and its Related Entities, subsidiaries, and any
third parties referenced in Section 2.2) is free to **make, have made,
use, sell, offer for sale, import**, practice **and otherwise transfer
products, technology and/or services under** the Joint Patent Rights
--for itself/themselves-- with no duty to notify or account to the
other Joint Contributors. Each Party hereby agrees, during and after
the term of this Agreement, to execute any document reasonably
requested to perfect another Joint Contributor?s patent rights as set
forth pursuant to this Agreement.
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