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From Jeffrey Thompson <jt...@us.ibm.com>
Subject Re: IBM and WS-Security
Date Fri, 24 Jun 2005 20:53:12 GMT
Davanum Srinivas <davanum@gmail.com> wrote on 06/24/2005 03:13:52 PM:

> Jeff,
> 
> Thanks. Now i understand the concept of offering license w/o
> identifying patent claims...BUT i see that the IBM license has a 1
> year limit (see section 6.1) and MSFT has no limits as long as the
> patent is applicable to this thing that we are implementing. Is'nt it
> better to remove the 1 year limit? (or am i reading this wrong)
> 

That one year limit isn't a problem, it's IBM's patent lawyers being . . . 
ah . . . patent lawyers.  (No insult to patent lawyers intended. 
Honestly.)

I think that the one year limit derives from the time limit in the U.S. 
for filing patent applications.  In the U.S., you can file a patent 
application for an invention up to one year after the patented invention 
was first published, incorporated into an on-sale product, etc.  That's 
the reason why there's always a search for prior art when someone tries to 
assert a patent claim.  If you can find a publication that describes the 
supposed invention or on-sale item which implements the invention that 
existed more than one year prior to the filing date, the filing was 
invalid, and therefore so is the patent.  It doesn't matter whether the 
patent holder actually invented the invention, whether someone learned it 
and then published it, or what.  If its past 1 year, the patent is dead. 
(I'm sure that there are exceptions, but that's the general rule.)

In the case of this license, it only applies to patents that were filed no 
later than a year and a day after WS-Security was published.  The 
reasoning is that any patents that were filed after that date don't need 
to be licensed because they are invalid (as WS-Security's publication 
would have predated it by more than a year).  Since there have been court 
cases which have held that it is patent abuse to try to license a group of 
patents, some of which are obviously invalid, it makes sense to exclude 
those.  I'm not saying that all patent licenses need to include that 
language, but the language makes sense.

Before anyone asks the obvious question, no, IBM is not in the habit of 
filing for obviously invalid patents.  But since IBM does a large number 
of patent filings each year, there is the possibility that someone misses 
something and we file one late.  In that case, I would hope the examiner 
would catch it, but we all know how overworked they are. 

In the end, the one year limitation isn't a problem.  All valid patents 
that are necessary for WS-Security would have been filed long before that 
one year period had expired.

> - dims
> 
<snip>
> 
> -- 
> Davanum Srinivas -http://blogs.cocoondev.org/dims/

Jeff

Staff Counsel, IBM Corporation  (914)766-1757  (tie)8-826  (fax) -8160
(notes) jthom@ibmus  (internet) jthom@us.ibm.com (home) jeff@beff.net
(web) http://www.beff.net/ 

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