mark nottingham

Moving the Goalposts: “Use” Patents and Standards

Wednesday, 2 April 2008


It’s become quite fashionable for large IT shops to give blanket Royalty-Free licenses for implementation of “core” technologies, such as XML, Web Services and Atom. I’ll refrain from linking to any of them, as the purpose of this post* is not to pick on any single one**.

Rather, it’s to call attention to a blind spot. IT folk see these licenses, nod their heads and relief, and assume that all is well; they can use this technology in their projects without fear of at least a handful of big, bad companies coming to get them.

That’s not the case.

You see, most of these licenses are restricted to the implementation of this technology, not its use. This clears the people who actually write the code that implements the [XML, Web Services, Atom] parsers, processors and tools, but it doesn’t help the folks that use those things.

I should point out that this isn’t limited to these one-off “commitments”; the vaunted W3C Patent Policy says:

“Essential Claims” shall mean all claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by implementation of the Recommendation.

In other words, people who implement XML parsers are free from worrying about any W3C Member for coming after them, while the people who use those parsers are out in the cold; if you’re using XML for healthcare, the same folks who make those commitments can have “XML in healthcare” patents and come after you.

In effect, the vendors are pooling together their IP and giving each other free cross-licenses on chosen technologies — calling a truce, if you like — but not including their users. A rapacious vendor could hoard IP relating to the use of a technology, push it as a standard to get wide adoption, and then cherry-pick cashed-up users to get the most revenue from patent enforcement.

Is it on purpose? In most cases I doubt it, but that’s the outcome, and it’s important for people to understand it. Can we do much about it? Probably not, unless somebody gets really generous and starts a patent pool. Sorry to end on a down note, but patents are involved, after all…

* Since it’s a sensitive subject, I should point out that I’m not wearing any of my various hats when writing this post; it just reflects my personal thoughts, and I am not a lawyer, or shudder a patent lawyer, so take it with a huge grain of salt.

** No, the timing is not purposeful; recent events merely reminded me that I wanted to post this.


Gabe Wachob said:

I think you’re confusing a couple things here.

First of all, with respect to: “In effect, the vendors are pooling together their IP and giving each other free cross-licenses on chosen technologies, calling a truce, if you like but not including their users.”, I think thats just not the case usually. The license is usually made to anyone, not just other “vendors” or contributors. Always in the big open standards bodies.

Secondly: yes, a company can go out and patent use of the spec in every conceivable situation where it might be used. I guess thats a problem, but I fail to see how the fact that there is an underlying standard exacerbates the problem? For example, if there is a patent claiming the use of HTML to provide e-commerce, the patent would likely also cover use of SGML to provide e-commerce (assuming it was written correctly), or plain text, etc? You could write a patent that covered one implementation but thats typically not how patent writers are incentivized… Mere use of a “standard” is (or shouldn’t be - hah!) by itself patentable (novelty requirement, utility requirement, etc).

Software patents are really screwed up, but I’m not sure I understand what the issue here is with standards bodies and their processes/licensing… To bring it to your example, just because the use of the electric socket is standardized and someone patents the use of the electric socket in a bunch of applications, does that mean the electric socket should not have been standardized, or that the standards body can do anything about patents people write post-standardization?

I guess I agree with you that the standards bodies don’t address this - but am not seeing what the incremental danger is here (other than the normal patent minefield of doing anything useful in software these days)…

Wednesday, April 2 2008 at 5:37 AM

Rigo Wenning said:


I agree with Gabe that IMHO you’re confusing some things. Especially patents on business methods (US-only) will use W3C technology as necessary components. That does not mean that a user of the patented method is paying for the use of the W3C technology. It means there are stupid (business method) patents that allow one single entity to monopolize a certain combination of W3C technologies in a certain workflow. And sure, that is an issue that the Patent Policy does not cover and you’re right to point it out. This said, the language used by non-lawyers to describe the cases is often not precise enough to really understand what’s going on, whether there is really an issue with some W3C Specification.

Now if you know of a case were some company charges royalties to end-users of W3C technologies AND they were part of the Working Group who produced that technology OR if you happen to stumble upon somebody claiming a patent over a certain combination of W3C technologies without any additional added value, please inform W3C (you can send me mail :) I think the Patent and Standards Interest Group is the right forum to address those issues if they appear. If this isn’t enough to solve the issue, we may even trigger a PAG to better understand the situation.

This said, we would probably not react on every patent that says that it’s implementation requires an XML Parser or HTTP. As Gabe says, in this case W3C technologies are mere prerequisites for a different invention.

Wednesday, April 2 2008 at 8:07 AM

Joe Gregorio said:

Sorry Mark, but I’m not following the problem or your proposed solution, and this is something I’d very much like to understand. To explain my confusion let’s replace “XML parser” with “electric motor” in your post to make the situation a little more concrete:

””” In other words, people who build electric motors are free from worrying about any W3C Member for coming after them, while the people who use those motors are out in the cold; if you’re using “electric motors for healthcare”, the same folks who make those commitments can have “electric motors in healthcare” patents and come after you. “””

Where “electric motors in healthcare” = “dialysis machine” as one such example.

Is this a good analogue for what you’re talking about?

Wednesday, April 2 2008 at 12:51 PM

Lisa Dusseault said:

Do users ever get sued for installing software that infringes patents? This sounds so dumb I’m sure it must have happened, but I can’t imagine it happening often (successfully).

Again comparing to the realm of physical artifacts, if I just bought a hand blender, even if I used it to wind yarn, I wouldn’t expect I could possibly be sued even if the maker of the hand blender knowingly infringed a patent. Only the maker of the hand blender could be sued.

Software often seems to bring out the dumb in people, but I would expect users of software would have so many different defenses in a case like this, that they were already in the clear. Didn’t Google just extend the free pass that users of infringing technology already get, to include implementors?

And wouldn’t it be easy for a user that extended the software to claim instead to be an implementor and thus covered by the new free pass?

Friday, April 4 2008 at 6:17 AM

Marbux said:

As a retired lawyer whose hobby includes dealing with software IPR issues, I think the problem with drafting in common IPR documents you raise is real. However, the example of the W3C Patent Policy is not a good example. You’ve missed that the operative language is not in the definition of essential claims but is instead in Section 5’s definition of a “W3C Royalty-Free license:”

“With respect to a Recommendation developed under this policy, a W3C Royalty-Free license shall mean a non-assignable, non-sublicensable license to make, have made, use, sell, have sold, offer to sell, import, and distribute and dispose of implementations of the Recommendation …”

A somewhat better example would be the Sun OpenDocument Patent Statement.

It protects only “implementations,” which is ambiguous in context. I.e., implementations cannot be sued for patent infringement. Implementors and software users can. Because of the rather iron-clad reservation of rights clause that forbids implication of rights not expressly granted, I think a good faith argument could be raised that the Sun Patent Statement protects no one, whether they are implementors or users.

On the other hand, I really question whether the courts would buy into such an argument. The defenses of laches and estoppel comes into play when patent plaintiffs have slept on their rights. Should Sun or another company similarly situated raise such an argument, a court would be likely to say that the fact they knew folks were interpreting their IPR document otherwise and distributing software to users created an obligation for the company to file suit to enforce its rights far earlier.

My sense is that a reservations of rights clause would be ineffective in such circumstances. E.g., a waiver of a right can be implied when there is conduct inconsistent with later assertion of a right. The hypothesized conduct inconsistent with later assertion of the right is sleeping on one’s rights too long, knowing that people are investing time and effort in a contrary interpretation of the IPR document. In such a case the waiver is not based on the rights bestowed or withheld by the IPR document, i.e., is not being implied into the IPR document, but instead is based on the inconsistent conduct.

A very similar defense could be raised under principles of estoppel or laches. The problem of course is that such defenses are somewhat squishy; you can’t find out whether they are good until a court says they are good.

This is not to be understood as legal advice; I resigned my Bar membership when I retired and am no longer licensed to practice law.

Saturday, April 19 2008 at 12:55 PM