7.3 Patent Disclosures
7.4 Notification of Open Group Standards which are the Subject of Patent Disclosures
7.5 Reasonable and Non-Discriminatory Terms
In this policy, the following terms shall have the following meanings:
Contribution means any submission to The Open Group intended by the Contributor for publication as all or part of any Open Group Standard, and any statement made within the context of an Open Group activity. Such statements include oral statements in Open Group sessions, as well as written and electronic communications made at any time or place on Open Group email lists.
Contributor means any individual, organization, or other entity submitting a Contribution.
Essential Claim means a valid claim of a Patent or a Patent application in any jurisdiction or a protected claim which would necessarily be infringed by the exercise of a right (including, but not by way of limitation, making, using, selling, importing, distribution, copying, etc.) with respect to an Implementation.
Implementation means any implementation, in any form, of an Open Group Standard.
Patent(s) means a patent, patents, and patent applications (whether published or otherwise) anywhere in the world, whether granted or pending.
Personal Knowledge means something an individual knows personally or, because of that individual's job, would reasonably be expected to know. However, for the avoidance of doubt, this requirement should not be interpreted as requiring the Contributor to perform any patent search to find applicable IPR.
By submission of a Contribution to The Open Group, each Contributor is deemed to agree to the following terms and conditions, on his or her own behalf, and on behalf of the organization(s) the Contributor represents or is sponsored by (if any) when submitting the Contribution:
The Standards Adoption Criteria provide for Patents to be pre-disclosed should a Contributor wish for an Implementation to require a license of any such Patents. More information on when and how this may be done follows below.
Any Contributor who reasonably and personally knows of Patents which the Contributor believes contain Essential Claims, or which may ultimately contain Essential Claims in respect of the Contribution, or which the Contributor has Personal Knowledge that his or her employer or sponsor may assert against any Implementations based on such Contribution, must make a Patent disclosure in accordance with this policy.
This requirement specifically includes Contributions that are made by any means including electronic or spoken comments, unless the latter are rejected from consideration before a disclosure could reasonably be submitted. A Patent discloser is requested to withdraw a previous disclosure if a revised Contribution negates the previous Patent disclosure, or to amend a previous disclosure if a revised Contribution substantially alters the previous disclosure.
Contributors must disclose Patents; there are no exceptions to this rule.
Any individual participating in an Open Group discussion who has Personal Knowledge of Patents which the individual believes contain or may ultimately contain Essential Claims in respect of a Contribution made by another person, or which such Open Group participant has Personal Knowledge that his or her employer or sponsor may assert against any Implementations based on such Contribution, must make a disclosure in accordance with this policy.
If a person has information about Patents that may contain Essential Claims in respect of a Contribution, but the participant is not otherwise required by this policy to disclose (e.g., the Patent is owned by some other company), such person is encouraged to notify The Open Group by sending an email message to patentdisclosures(at)opengroup.org. Such a notice should be sent as soon as reasonably possible after the person realizes the connection between the Patent and the Contribution.
Timely Patent disclosure is important because The Open Group needs to have as much information as they can while they are evaluating alternative solutions.
The Patent disclosure required pursuant to Section 18.104.22.168 above must be made as soon as reasonably possible after the Contribution is made. In the case of a Contributor first learning of Patents containing Essential Claims in its Contribution (e.g., a new patent application or the discovery of a relevant patent in a patent portfolio), a disclosure must be made as soon as reasonably possible after the Patent becomes within the Contributor's Personal Knowledge.
The Patent disclosure required pursuant to Section 22.214.171.124 above must be made as soon as reasonably possible after the Contribution is made. In the case of a participant first learning of Patents containing Essential Claims in a Contribution by another party; for example, a new patent application or the discovery of a relevant patent in a patent portfolio, after the Contribution was made by the third party, a disclosure must be made as soon as reasonably possible after the Patent becomes within the participant's Personal Knowledge.
Patent disclosures are made by following the instructions below and sending the information requested to The Open Group Legal Counsel.
The disclosure must list the numbers of any issued patents or published patent applications or indicate that the claim is based on unpublished patent applications. The disclosure must also list the specific Open Group Standard affected. In addition, if the Open Group Standard includes multiple parts and it is not reasonably apparent which part of such Open Group Standard is alleged to be affected by the Patent in question, it is helpful if the discloser identifies the sections of The Open Group Standard that are alleged to be so affected.
If a disclosure was made on the basis of a patent application (either published or unpublished), then The Open Group may request a new disclosure indicating whether any of the following has occurred:
If the Patent has been issued, then 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 Contribution, it is helpful if such a disclosure describes any differences in applicability to the Contribution. If the Patent application was abandoned, then the new disclosure must explicitly withdraw any earlier disclosures based on the application.
New or revised disclosures may be made voluntarily at any time.
The requirement for a Patent disclosure is not satisfied by the submission of a blanket statement of possible Patents on every Contribution. This is the case because the aim of the disclosure requirement is to provide information about specific Patents against specific standards under discussion in The Open Group.
For the same reason, the requirement is also not satisfied by a blanket statement of willingness to license all potential Patents under fair and non-discriminatory terms. However, the requirement for an IPR disclosure is satisfied by a blanket statement of the Patent discloser's willingness to license all of its potential Patents to implementers of an Open Group specification on a royalty-free basis as long as any other terms and conditions are disclosed in the Patent disclosure statement.
Patent disclosures should include information about licensing of the Patents in case Implementations require a license. Specifically, a disclosure should indicate whether, upon approval as an Open Group Standard, all persons will be able to obtain the right to implement, use, distribute, and exercise other rights with respect to Implementations:
The inclusion of licensing information in Patent disclosures is not mandatory, but it is encouraged. If the inclusion of licensing information in a Patent disclosure would significantly delay its submission, then a disclosure without licensing information should be submitted first, followed by a new disclosure when the licensing information becomes available.
There are cases where individuals are not permitted by their employers or by other factors to disclose the existence or substance of Patents (particularly, patent applications). Since disclosure is required for anyone submitting Contributions or participating in The Open Group Standards Process, a person who does not disclose Patents for this reason, or any other reason, must not contribute to or participate in relevant Open Group activities where that person has Personal Knowledge of relevant Patents which he or she knows he or she will not disclose.
Contributing to or participating in Open Group discussions about the development of an Open Group Standard without making required Patent disclosures is a violation of The Open Group Standards Process.
Where any such Patent is disclosed before approval as an Open Group Standard, The Open Group Manager shall include in the approval request a note indicating the existence of such claimed Patent in the standard.
The Open Group disclaims any responsibility for identifying the existence of or for evaluating the applicability of any IPR, disclosed or otherwise, to any Open Group Standard, and will take no position on the validity or scope of any such IPR claims.
Where Intellectual Property Rights have been so disclosed, the discloser shall provide a written assurance that, upon approval of the Open Group Standard by The Open Group Governing Board, all persons will be able to obtain the right to implement, use, distribute, and exercise other rights with respect to Implementations under one of the licensing options specified in Section 7.3.5 above unless such a statement has already been submitted.
When an Open Group Standard is published for which a Patent disclosure has been provided in accordance with the above, The Open Group Manager will ensure that the following notice is present in such standard:
Disclaimer of Validity: The Open Group takes no position regarding the validity or scope of any patents or other rights that might be claimed to pertain to the Implementation or use of this Open Group Standard 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.
Copies of Patent disclosures made to The Open Group 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 standard can be obtained from The Open Group Legal Counsel upon request.
The Open Group 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 Open Group at patentdisclosures(at)opengroup.org.
For the avoidance of doubt, The Open Group will not make any explicit determination that the assurance of reasonable and non-discriminatory terms or any other terms for the use of an Implementation has been fulfilled in practice.
Last updated: May 2012