W3C Proposes Flexibility on Royalty-Free Policy

The W3C, concerned that some of its work on web services standards could slow, last week began searching for a flexible compromise on the controversial plan to allow only royalty-free technologies to be considered as standards. While W3C insists the new plan keeps the RF preferences in place, the body wants to provide flexibility on a case-by-case basis. See the plan.

Tags: License, Technologies, Royalty-free, Recommendation, Standards, Patent, Policy,

The W3C, concerned that some of its work on web services standards could slow, last week began searching for a flexible compromise on the controversial plan to allow only royalty-free technologies to be considered as standards. While W3C insists the new plan keeps the RF preferences in place, the standards body wants to provide members some flexibility on a case-by-case basis.

Late last fall, the W3C proposed a controversial Royalty-Free stance, which would have precluded commercially-developed technologies from being used as core technologies for any W3C standards, unless the companies that had first developed them agreed in advance to make them available royalty-free.

W3C officials since have concluded that such a 'royalty-free' only policy may prove too rigid -- and slow down standards adoption. As a consequence, the W3C issued on March 19 what it called a "final proposed patent policy," which would give the standards body a now unavailable flexibility to evaluate technologies -- whether royalty-free or not -- on a case-by-case basis.

New Proposal Sets Flexibility
The new proposal does not totally back away from the W3C's royalty-free objective, W3C officials insist. Rather, the policy gives W3C a number of options for how best it can use technologies not royalty-free. Options would include: (a) designing around any patented technologies not made RF, (b) removing technologies for which a fee might be required in total from a proposed standard; (c) allowing the public to comment on the question to allow fees-based technologies to be used in any proposed standards; or (4) simply stopping the work in that area if the subject area is too constrained by limited options.

In describing the latest proposal, Daniel Weitzner, chair of the W3C's Patent Policy Working Group, defended the compromise, telling BusinessWeek.com: "The way I see it, it gives us the flexibility to look at situations that don't fit in with our royalty-free licensing policy and decide what to do rather than hit a dead end. I think it will be used very rarely."

The W3C's Royalty-Free Licensing Plan
Even with its proposed compromise, the latest "final proposal" makes clear W3C's intent to ensure that the majority of W3C standards are based on technologies which are in whole or part royalty-free.

What follows is W3C's Top 10 requirements for royalty-free licensing, from the W3C pending final draft document.

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:

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;

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 RF license (as defined in this policy) 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 not be conditioned on payment of royalties, fees or other consideration;

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;

8. shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the W3C Royalty-Free license as offered by the licensor.

9. The RF license conforming to the requirements in this policy shall be made available by the licensor as long as the Recommendation is in effect. The term of such license shall be for the life of the patents in question, subject to the following limitation… (10)

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.

Devil in the Details? -- Inside "Essential Claims"
Just to be clear, the W3C also includes some thorough language to set out rules for any vendors' "essential claims" of rights to assert ownership and/or royalities on their intellectual property (IP). That language also appears below:

"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 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.

Limitations on the Scope of Definition of Essential Claims

The W3C states the following are expressly excluded from and shall not be deemed to constitute Essential Claims:

1. any claims other than as set forth above even if contained in the same patent as Essential Claims; and

2. claims which would be infringed only by:
(a) portions of an implementation that are not specified in the normative portions of the Recommendation or enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Recommendation and are not themselves expressly set forth in the Recommendation (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or

(b) the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Recommendation; and

3. design patents and design registrations.

Comments on this latest W3C "final draft" are due the end of April.