Patent Policy Working Group Royalty-Free Patent Policy

The W3C Royalty-Free Patent Policy governs the handling of patents in the process of producing Web standards. The goal of this policy is to assure that Recommendations produced under this policy can be implemented on a royalty-free basis.

Status of This Document

This section describes the status of this document at the time of its publication. Other documents may supersede this document. The latest status of this document series is maintained at the W3C.

This is the W3C Last Call Working Draft of the W3C Royalty-Free Patent Policy for review by W3C Members and other interested parties. It has been produced by the Patent Policy Working Group (PPWG). The PPWG has agreed [Member only link] to release this Last Call draft for Member and community input. Each issue considered in the formulation of this proposed policy has been resolved by the Working Group according to the Process Document without any formal objection, though one participant disagrees with the direction taken by this policy. As this document has important implications for all Activities at W3C and the entire Web community, we seek feedback both from W3C Member organizations as well as interested members of the public. During the Last Call period, the Patent Policy Working Group plans to discuss harmonization of terms between the Process Document and the Patent Policy.

This is a public W3C Working Draft. It is a draft document and may be updated, replaced, or obsoleted by other documents at any time. It is inappropriate to use W3C Working Drafts as reference material or to cite them as other than "work in progress."

0. Overview

All sections of this document are normative unless specifically market non-normative.

1. Licensing Goals for W3C Recommendations

In order to promote the widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Under this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms.

To this end, Working Group charters will include W3C RF licensing requirements that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium.

2. Licensing Obligations of Working Group Participants

The following obligations shall apply to all participants in W3C Working Groups. These obligations will be stated in each Working Group charter and in standard language that will appear in all Calls for Participation.

2.1. W3C RF Licensing Requirements for all Working Group Participants

As a condition of participating in a Working Group, each participant (W3C Members, W3C Team members, invited experts, and members of the public) shall agree to make any Essential Claims available under W3C RF licensing requirements, as defined in this policy. With the exception of the provisions of section 2.2 below, W3C RF licensing requirements are binding on participants for the life of the patents in question, regardless of changes in participation status or W3C Membership.

Only the affirmative act of joining a RF Working Group, or agreeing to other licensing terms, will obligate a Member to the licensing commitments described here. Mere Membership in W3C alone, without other factors, does not give rise to the RF licensing obligation.

2.2 Exclusion from W3C RF Licensing Requirements

Under the following conditions, Working Group participants may exclude specific patents from the overall W3C RF licensing requirements:

2.2.1. Exclusion with Continued Participation

Specific patents or published patent applications may be excluded from the W3C RF licensing requirements by a participant who seeks to remain in the Working Group only if that participant discloses no later than 60 days after the publication of the Working Group's requirements document specific patents that will not be licensed on W3C RF terms. A participant who excludes patents may continue to participate in the Working Group.

If any claims are made essential by the final Recommendation as a result of subject matter not present or apparent in the requirements document, the participant may exclude these new Essential Claims, and only these claims, by using this exclusion procedure within 60 days after the publication of the Last Call Working Draft. After that point, no claims may be excluded. (Note that if material new subject matter is added after Last Call, then a new Last Call draft will have to be produced, thereby allowing another exclusion period for 60 days after that most recent Last Call draft.)

2.2.2. Exclusion and Resignation from the Working Group

A participant may resign from the Working Group within 60 days after the publication of the requirements document and be excused from all licensing commitments arising out of Working Group participation.

If a participant leaves the Working Group later than 60 days after the publication of the requirements document, that participant is only bound to license Essential Claims based on subject matter contained either in the requirements document or the latest Working Draft published before the participant resigned from the Working Group. In addition, departing participants have 60 days after their actual resignation to exclude Essential Claims based on subject matter that is contained in such latest Working Draft and not present or apparent in the requirements document. (The participant follows the same procedures specified in this section 2.2 for excluding claims in issued patents, published applications, and unpublished applications.)

2.2.3. Joining an Already Established Working Group

Participants who join a Working Group more than 60 days after the publication of the requirements document must exclude Essential Claims covered in the requirements document immediately upon joining the Working Group.

2.2.4 Exclusion Procedures for Pending, Unpublished Patent Applications

Exclusion of Essential Claims in pending, unpublished applications follows the procedures for exclusion of issued claims in section 2.2.1 and 2.2.2, except that the final deadline for exclusion of claims under application is at Last Call plus 60 days for any material, regardless of whether or not it was contained in the requirements document. Nevertheless, participants have a good faith obligation to make such exclusions as soon as is practical after the publication of the requirements document.

Any exclusion of an Essential Claim in an unpublished application must provide either:

If option 2 is chosen, the effect of the exclusion will be limited to the identified part(s) of the specification.

2.3 Licensing Commitments in W3C Submissions

At the time a W3C Submission [PROCESS, section 8] is made, all Submitters and any others who provide copyright licenses associated with the submitted document must indicate whether or not each entity (Submitters and other licensors) will offer a license according to the W3C RF licensing requirements for any portion of the Submission that is subsequently incorporated in a W3C Recommendation. The W3C Team may acknowledge the Submission if the answer to the licensing commitment is either affirmative or negative, and shall not acknowledge the Submission if no response is provided.

2.4 Note on Licensing Commitments for Invited Experts

Invited experts participate in Working Groups in their individual capacity. Therefore, following the definition of Essential Claims, invited experts are only obliged to license those claims over which they exercise control.

3. W3C Royalty-Free (RF) Licensing Requirements

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 that:

All Working Group participants are encouraged to provide a contact from which licensing information can be obtained and other relevant licensing information. Any such information will be made publicly available along with the patent disclosures for the Working Group in question.

4. Disclosure

Disclosure is required when an Advisory Committee representative (AC rep), or any other party in a Member organization who received the disclosure request, has actual knowledge of likely Essential Claims with respect to a specification. Anyone who received a disclosure request in a Member organization and who has such knowledge must inform that AC rep. Where disclosure is required, the AC rep will do so.

Exemption for those making a W3C RF licensing commitment: The disclosure obligation as to a particular claim is satisfied if the holder of the claim has made a commitment to license that claim under W3C RF licensing requirements, or has agreed to license any possibly essential claims it may hold with respect to a Recommendation under W3C RF licensing requirements.

4.1. Disclosure Requests

Disclosure requests will be included in the "Status of This Document" section of each Recommendation track document as it reaches each new maturity level (requirements document, Working Draft, Last Call Working Draft, Candidate Recommendation, Proposed Recommendation, Recommendation). Separate requests may be issued by the W3C to any party suspected of having knowledge of Essential Claims. Such disclosure requests will instruct the recipient to respond through their AC rep (in the case of Members) or a W3C contact (in the case of non-Members).

4.2. Disclosure Contents

4.3. Disclosure of Laid-Open or Published Applications

In the case of laid-open or published applications, the Member's good faith disclosure obligation extends to unpublished amended and/or added claims that have been granted by relevant legal authorities and that the Member believes may contain Essential Claims. To satisfy the disclosure obligation for such claims, the Member shall either:

4.4 Disclosure of Pending, Unpublished Applications

W3C Members must disclose the existence of pending unpublished applications that may have Essential Claims only when claims are being crafted based on information from a W3C Working Group.

4.5. Good Faith Disclosure Standards

Satisfaction of the disclosure requirement does not require a patent search or any additional analysis of the relationship between the patents that the Member organization holds and the specification in question.

Disclosure of third party patents is only required where the Advisory Committee representative or Working Group participant has been made aware that the third party patent holder or applicant has asserted that its patent contains Essential Claims, unless such disclosure would breach a pre-existing non-disclosure obligations.

4.6. Timing of Disclosure Obligations

The disclosure obligation is an ongoing obligation that begins with the Call for Participation. Full satisfaction of the disclosure obligation may not be possible until later in the process when the design is more complete. In any case, disclosure as soon as practically possible is required.

The disclosure obligation terminates when the Recommendation is published or when the Working Group terminates.

4.8. Disclosure Obligations of Invited Experts

Invited experts or members of the public participating in a Working Group must comply with disclosure obligations to the extent of their own personal knowledge.

4.9. Disclosures to Be Publicly Available on Recommendation Track

Patent disclosure information for each specification on the Recommendation track will be made public along with each public Working Draft issued by the Working Group. A complete report on patent disclosures made with respect to a given specification must be available to the public as soon as a Candidate Recommendation is published. If the specification moves directly to Proposed Recommendation after Last Call Working Draft, then the disclosures are made public along with the Proposed Recommendation.

5. Exception Handling

In the event a patent has been disclosed that may be essential, but is not available under W3C RF licensing requirements, a Patent Advisory Group (PAG) will be launched to resolve the conflict. The PAG is an ad-hoc group constituted specifically in relation to the Working Group with the conflict. A PAG may also be formed without such a disclosure if a PAG could help avoid anticipated patent problems. During the time that the PAG is operating, the Working Group may continue its technical work within the bounds of its charter.

A PAG may also be convened in the event Essential Claims are discovered after a Recommendation is issued. In this case the PAG will be open to any interested Member, though the PAG may choose to meet without the holder of the Essential Claims in question.

5.1. PAG Composition

W3C Member participants in the PAG should be authorized to represent their organization's views on patent licensing issues. Any participant in the PAG may also be represented by legal counsel, though this is not required. Invited experts are not entitled to participate in the PAG, though the PAG may chose to invite any qualified experts who would be able to assist the PAG in its determinations.

W3C expects to provide qualified legal staffing to all PAGs in the form of a Team member who develops experience with the PAG process and patent issues at W3C. Legal staff to the PAG will represent the interests of the Consortium as a whole.

5.2 PAG Procedures

The PAG will be convened by the Working Group Team Contact, based on a charter developed initially by the Team. The timing for convening the PAG is at the discretion of the Director, based on consultation with the Chair of the Working Group. In some cases, convening a PAG before a specific patent disclosure is made may be useful. In other cases, it may be that the PAG can better resolve the licensing problems when the specification is at the Last Call or Candidate Recommendation maturity level.

The PAG charter must specify deadlines for completion of individual work items it takes on. The PAG, once convened, may propose changes to its charter as appropriate, to be accepted based on consensus of the PAG participants. The Team will choose a member of the PAG to serve as Chair. A single PAG may exist for the duration of the Working Group with which it is associated if needed.

In order to obtain input from the interested public at large, as soon as the PAG is convened, the PAG charter will be made public, along with all of the patent disclosure and licensing statements applicable to the Working Group in question.

5.3. PAG Conclusion

Outcomes 4 or 5 require an Advisory Committee review and Director's decision. In any case, the PAG must state its proposal and reasons in a public W3C document.

Appendix - Definition of Essential Claims [Normative]

"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date prior to the publication of the first public Working Draft of the specification and extending until one year and one day after the publication of the first public Working Draft, in any jurisdiction in the world, that a Member (or a licensor or licensee, with reference to entities other than Members) owns, or under which a Member (or a licensor or licensee) has the right to grant licenses without obligation of payment or other consideration to an unrelated third party, that would necessarily be infringed by implementation of the Recommendation. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing the normative portions of the Recommendation. Existence of a non-infringing alternative shall be judged based on the state of the art at the time the specification becomes a Recommendation.

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

For purposes of this definition, the normative portions of the Recommendation shall be deemed to include only architectural and interoperability requirements. Optional features in the RFC 2119 [KEYWORDS] sense are considered normative unless they are specifically identified as informative. Implementation examples or any other material that merely illustrate the requirements of the Recommendation are informative, rather than normative.

Addendum - Text of RAND Exception Process Considered and Rejected by the Patent Policy Working Group [Non-Normative]

In response to an action item [ACTION] from the W3C Advisory Committee, the Patent Policy Working Group (PPWG) has given extensive consideration to the question of whether and under what circumstances to allow W3C Recommendations to be issued where some Essential Claims are only available on RAND (reasonable and non-discriminatory), not RF, terms. After months of discussions and several votes, the PPWG concluded that there should not be any process of including RAND technologies in W3C Recommendations. (The votes against the RAND exception process were 10-5 on 15 April 2002, 12-7 against the Core/Extension proposal on 1 October 2002, and 11-7 on 1 October 2002.)

Despite the fact that the PPWG recommends against including this proposal in the final policy, it is presented in this draft for information purposes because it illustrates the considerations the PPWG addressed in response to the Advisory Committee request.

The following material from the 20 September 2002 Working Draft [RAND] would have replaced the text of Section 5 in the current Royalty-Free Patent Policy Working Draft.

5. Exception Handling

In the event a patent has been disclosed that may be essential, but is not available on RF terms, then a Patent Advisory Group (PAG) will be launched to resolve the conflict. The PAG is an ad-hoc group constituted specifically in relation to the Working Group with the conflict. A PAG may also be formed without such a disclosure if the PAG could help avoid anticipated patent problems. During the time that the PAG is operating, the Working Group may continue its technical work within the bounds of its charter.

5.1. PAG Composition

The PAG is composed of:

The Advisory Committee representatives of each W3C Member organization participating in the Working Group (or alternate designated by the AC rep)
Working Group Team Contact
W3C Counsel
Working Group Chair, ex officio
Domain Leader responsible for the Working Group
Others suggested by the WG Chair and/or Team with the approval of the Director

5.2 PAG Procedures

The PAG will be convened by the Working Group Team contact, based on a charter developed initially by the Team. The timing for convening the PAG is at the discretion of the Director, based on consultation with the Chair of the Working Group. In some cases, convening a PAG before a specific patent disclosure is made may be useful. In other cases, it may be that the PAG can better resolve the licensing problems when the specification is at the Last Call or Candidate Recommendation phase.

The charter should include:

clear goals for the PAG, especially a statement of the question(s) the PAG is to answer;
duration;
confidentiality status, which must follow the underlying Working Group (Member only, public, etc.).

The PAG charter must specify deadlines for completion of individual work items it takes on. The PAG, once convened, may propose changes to its charter as appropriate, to be accepted based on consensus of the PAG participants. The Team will choose a member of the PAG to serve as Chair. A single PAG may exist for the duration of the working group with which it is associated if it is needed.

5.3. PAG Conclusion

After appropriate consultation, the PAG may conclude:

The initial concern has been resolved, enabling the Working Group to continue.
The Working Group should be instructed to consider designing around the identified claims.
The Team should seek further information and evaluation, including but not limited to evaluation of the patents in question or the terms under which acceptable licensing may be available.
The final Recommendation cannot be implemented under the W3C Core licensing model. If PAG determines that specific features not available under the W3C Core license are desirable and unavoidable, then the PAG may propose:

a) the WG develop a specification with two identified features sets: a Core feature set, implementable according to W3C Core license requirements, and an Extension feature set, implementable under the W3C Extension license requirements. The PAG recommendation will contain a division of features between the Core & Extension spec. The procedure and licensing terms outlined in W3C Core/Extension Specification Development Process (Section 5.4) [Member only link] will be followed.

b) other action is taken to resolve the licensing problem that will enable the Recommendation to be meet its original goals and the goals of the Consortium.
The Working Group should be terminated.
The Recommendation (assuming it has already been issued) should be rescinded

Outcomes 4, 5, 6 require an Advisory Committee Review and Director's Decision. In any case, the PAG's must state its proposal and reasons in a public W3C document.

5.4 W3C Core/Extension Specification Development Process [This section to be moved to an appendix of the main policy]

In the event the PAG agrees that

requirements of the specification are not implementable on W3C Core licensing terms, and
the specification should be divided into Core and Extension components,

then the PAG must assemble a Core/Extension proposal for AC Review. Based on an Advisory Committee Review of the Core/Extension proposal, the Director will either re-charter the WG to produce a specification with Core/Extension components, require that the WG continues in its current mode of operation, or terminate.

5.4.1 Core/Extension Process

A Core/Extension Proposal developed by a PAG for AC Review must contain the following elements:

A description of the design requirements for both the Core components and the Extension components. The core components must enable basic interoperability in the relevant application space, but might not include certain advanced or specialized features which are not available under the W3C RF/Core license but will be available under the W3C Extension licensing [Member only link] terms.
Licensing terms for the Extension component that conform to the W3C Extension Licensing requirements [Member only link]. Such terms must be specified with enough detail to enable the AC and the public to comment on them.
Confirmation that all previously made RF licensing commitments have been expressly reaffirmed or withdrawn

The Core/Extension Proposal will be circulated for AC Review as described in the W3C Process Document. The entire Proposal must be available for public review, and public comments must be considered during the Director's Decision on the Proposal.

If the PAG recommendation to continue development through the Core/Extension is accepted by a Director's Decision, then those Working Group participants who have already made W3C Core license commitments may withdraw those commitments. Notice of intent to withdraw such commitments must be given in time to be included in the Core/Extension Proposal circulated for AC Review. Otherwise, the original commitments to RF licensing made by Working Group participants remain in force.

5.4.2 Extension Licensing Requirements

A W3C Extension license shall mean a non-assignable, non-sublicensable license to make, have made, use, have used, sell, have sold, offer to sell, import, and distribute and dispose of implementations of the Recommendation that:

1. shall be available to all worldwide, whether or not they are W3C Members;

2. shall extend to all Essential Claims owned or controlled by the licensor and its Affiliates;

3. may be limited to implementations of the Recommendation, and to what is required by the Recommendation;

4. may be conditioned on a grant of a reciprocal license on similar terms to all Essential Claims owned or controlled by the licensee. A reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all.

5. may be conditioned on payment of reasonable, non-discriminatory royalties or fees provided that such fees be assessed in such a manner as to enable a diversity of independent implementations. Such terms may include:

provision of zero-fee licenses for making and using implementations of the Recommendation,
a credit for each implementer,
other openly specified fee structures that enable widespread implementation.

The specific terms of the Extension license must be established in the Core/Extension proposal developed by the PAG.

6. may be suspended with respect to any licensee when licensor is sued by licensee for infringement of claims essential to implement any W3C Recommendation;

7. may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee, but may include reasonable, customary terms relating to operation or maintenance of the license relationship such as the following: choice of law and dispute resolution;

License term:

9. The Extension license shall be made available by the licensor as long as the Recommendation is in effect.

10. If the Recommendation is rescinded by W3C, then no new licenses need be granted but any licenses granted before the Recommendation was rescinded shall remain in effect.

11. An interim license shall be made available 60 days after the publication of the requirements document. This interim license will expire 60 days after the publication of the Proposed Recommendation, or 90 days after the expiration date of the Working Group charter, whichever comes first.

RAND Exception Task Force Acknowledgments

Participants in the RAND Exception Task Force who contributed to this draft include: Chuck Adams (IBM), Mark DeLuca (Woodcock Washburn LLP for Microsoft), Michael Gelblum (Oracle), Michele Herman (Microsoft), Gerry Lane (IBM), Lloyd McIntyre (Xerox), Eben Moglen (FSF), Earl Nied (Intel), Bruce Perens (SPI), Scott Peterson (HP), Gene Potkay (Avaya), Chuck Powers (Motorola), Barry Rein (Pennie & Edmonds for W3C), Larry Rosen (OSI), David Turner (Microsoft), Daniel Weitzner (W3C, Chair), Helene Plotka Workman (Apple), and Joe Young (Xerox).

The Task Force participants devoted considerable time to this effort, even though not all agree that a RAND exception was ultimately desirable. As such, contribution and participation in developing this proposal does not necessarily reflect support of the proposal by any individual participant.

References

Acknowledgments

W3C's evolving patent policy has been informed by help, comments, criticism, and occasional rants by W3C Members, many voices from the independent developer and Open Source/Free Software communities, W3C Advisory Committee representatives, the W3C Team, the W3C Advisory Board, and participants in the Patent Policy Working Group. Those who have participated in the beta testing of this policy, leading up to the W3C Current Patent Practice document, have made invaluable contributions to shaping a policy that will actually contribute to achieving W3C's mission.

Every participant in the Patent Policy Working Group has made substantial contributions to this document. Since its inception, the following individuals have participated in the group:

Jean-François Abramatic (W3C), Chuck Adams (IBM), Angela Anderson (Nortel), Martin Ashton (Reuters, Ltd.), Carl Cargill (Sun Microsystems), Wanda Cox (Apple Computer), W. Mike Deese (Microsoft), Mark DeLuca (Woodcock Washburn LLP for Microsoft), Don Deutsch (Oracle), Tom Frost (AT&T), Michael Gelblum (Oracle), Mari Georges (ILOG S.A.), Lisa Goldman (Sun Microsystems), Eduardo Gutentag (Sun Microsystems), Toon Groenendaal (Philips Electronics), Michele Herman (Microsoft), Richard J. Holleman (IBM), Ian Jacobs (W3C), Glen Johnson (Nortel Networks), Jerry Kellenbenz (Apple Computer), George Kerscher (Daisy Consortium), Alan Kotok (W3C), Gerry Lane (IBM), Arnaud Le Hors (IBM), Susan Lesch (W3C, Team Contact), Bede McCall (MITRE), Catherine McCarthy (Sun Microsystems), Lloyd McIntyre (Xerox), Earl Nied (Intel), Steve Nunn (The Open Group), Scott K. Peterson (Hewlett-Packard), Tony E. Piotrowski (Philips Electronics), Gene Potkay (Avaya), Chuck Powers (Motorola), Barry Rein (Pennie & Edmonds for W3C), Gib Ritenour (Nortel Networks), Michael Schallop (Sun Microsystems), Kevin Smith (Nortel Networks), George Tacticos (IBM), David Turner (Microsoft), Daniel Weitzner (W3C, Working Group Chair), George Willingmyre (GTW Associates), Helene Plotka Workman (Apple Computer), Don Wright (Lexmark), Joe Young (Xerox), and Tom Zell (Xerox). Invited experts are Eben Moglen (Free Software Foundation), Bruce Perens (Software in the Public Interest), Larry Rosen (Rosenlaw.com for Open Source Initiative).

Finally, Susan Lesch has done a masterful job on several occasions to help this inherently complex document read more easily and clearly.