jsr358
  1. jsr358
  2. JSR358-26

Keep or eliminate the obligation to license Essential Patents on FRAND terms for JSRs in which you do not participate

    Details

    • Type: Bug Bug
    • Status: Open
    • Priority: Major Major
    • Resolution: Unresolved
    • Component/s: Intellectual Property
    • Labels:
      None

      Description

      Section 6 of the JSPA (Special Patent Considerations) requires that all JCP members, even those who do not participate in the development of a JSR, grant essential patent rights to all licensees of that JSR.

      This provision may be a barrier to corporate participation.

      Could it even be enforced against individuals or their employers?

      Should we keep it, or can we drop it?

      Note: our current processes with regard to individuals (Exhibit B) mean that these broad grants are not made by individuals or their employers (Exhibit B refers to a specific JSR only.)

        Activity

        Hide
        pcurran added a comment -

        Gil Tene said in a comment on the doodle poll:

        I think that this item should be discussed in the context of overall patent grant obligations, as well as reciprocity requirements. Specifically, section 6 is currently linked to from section 5.C.1, and losing that could be an issue in the overall IP picture.
        We need to discuss what will be left at the end - e.g. I believe that at the very least, we need spec IP rights to be able to be licensed under terms that require non-assertion against compatible implementations of the spec...

        Show
        pcurran added a comment - Gil Tene said in a comment on the doodle poll: I think that this item should be discussed in the context of overall patent grant obligations, as well as reciprocity requirements. Specifically, section 6 is currently linked to from section 5.C.1, and losing that could be an issue in the overall IP picture. We need to discuss what will be left at the end - e.g. I believe that at the very least, we need spec IP rights to be able to be licensed under terms that require non-assertion against compatible implementations of the spec...
        Hide
        pcurran added a comment -

        Mike Milinkovich said in a comment on the doodle poll:

        I would like to suggest a royalty-free patent licensing model as a potential solution to this. Both the Apache and Eclipse open source licenses have a very similar model that lays out the requirements that any patents which read on contributions must be licensed royalty-free. This model has seemingly worked very well for those communities, and I would be interested in exploring any shortcomings the model may have in the JCP context.

        Show
        pcurran added a comment - Mike Milinkovich said in a comment on the doodle poll: I would like to suggest a royalty-free patent licensing model as a potential solution to this. Both the Apache and Eclipse open source licenses have a very similar model that lays out the requirements that any patents which read on contributions must be licensed royalty-free. This model has seemingly worked very well for those communities, and I would be interested in exploring any shortcomings the model may have in the JCP context.
        Hide
        pcurran added a comment -

        Steve Wolfe said in a comment on the doodle poll:

        We are open to considering all aspects of the IP flows in the JSPA, but need to do so in the context of the complete IP picture. Having said that, we believe one of the JCP's key objectives should be making the Java ecosystem and our customers confident that Java is a safe place to invest, and to achieve that, we believe JCP members should support a model where Java investments are not at risk from unpredictable IP claims.

        Show
        pcurran added a comment - Steve Wolfe said in a comment on the doodle poll: We are open to considering all aspects of the IP flows in the JSPA, but need to do so in the context of the complete IP picture. Having said that, we believe one of the JCP's key objectives should be making the Java ecosystem and our customers confident that Java is a safe place to invest, and to achieve that, we believe JCP members should support a model where Java investments are not at risk from unpredictable IP claims.
        Hide
        pcurran added a comment - - edited

        I should have read Mike Milinkovich's comment more closely when I pasted it! He said:

        "I would like to suggest a royalty-free patent licensing model as a potential solution to this. Both the Apache and Eclipse open source licenses have a very similar model that lays out the requirements that any patents which read on contributions must be licensed royalty-free. This model has seemingly worked very well for those communities, and I would be interested in exploring any shortcomings the model may have in the JCP context."

        This is exactly what we have today for contributions. The question is about patent rights with respect to stuff that you do not contribute (but without which someone else's JSR cannot be implemented.) Note that the Spec Lead (for everything, whether or not formally contributed) and Expert Group members (for contributions) are already obligated to license royalty-free.

        The RAND obligation really is a corner case, and only covers contributions made by others and which result in the inability to implement a JSR without violating your patent. I'd be interested to know how often money changes hands in practice as a consequence of this requirement.

        Show
        pcurran added a comment - - edited I should have read Mike Milinkovich's comment more closely when I pasted it! He said: "I would like to suggest a royalty-free patent licensing model as a potential solution to this. Both the Apache and Eclipse open source licenses have a very similar model that lays out the requirements that any patents which read on contributions must be licensed royalty-free. This model has seemingly worked very well for those communities, and I would be interested in exploring any shortcomings the model may have in the JCP context." This is exactly what we have today for contributions. The question is about patent rights with respect to stuff that you do not contribute (but without which someone else's JSR cannot be implemented.) Note that the Spec Lead (for everything, whether or not formally contributed) and Expert Group members (for contributions) are already obligated to license royalty-free. The RAND obligation really is a corner case, and only covers contributions made by others and which result in the inability to implement a JSR without violating your patent. I'd be interested to know how often money changes hands in practice as a consequence of this requirement.
        Hide
        pcurran added a comment -

        What's in question is not the elimination of Section 6 in its entirety, but rather the elimination of the obligation to license Essential Patents on FRAND terms for JSRs in which you do not participate. I will reword the issue accordingly.

        Show
        pcurran added a comment - What's in question is not the elimination of Section 6 in its entirety, but rather the elimination of the obligation to license Essential Patents on FRAND terms for JSRs in which you do not participate. I will reword the issue accordingly.

          People

          • Assignee:
            Unassigned
            Reporter:
            pcurran
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            Dates

            • Created:
              Updated: