In Part 1, we sketched out the background and identified two criticisms of MS’s Open Specification Promise (OSP). The first was that it does not cover future revisions of the standard.
There is obviously a difficulty about a covenant not to sue covering future changes, because no one knows what they might be. The general concept of the covenant not to sue is that the patent rights are not completely given up, but may be maintained and yield royalties or block rivals in other areas apart from the standard in question. It is possible that future revisions of the standard might radically extend it, perhaps against the wishes of the vendor, into an area where the vendor was enjoying a significant royalty stream which it did not wish to forego.
As far as I can see, IBM and MS both restrict their covenants to the existing standard, although IBM makes clear in the associated FAQs that it would normally extend it to future revisions. MS has been repeatedly attacked by the Open Source community for its failure to cover all future revisions of OpenXML upfront.
On the other hand, Sun has sought to cover future revisions of ODF by extending the covenant to: “any subsequent version thereof (”OpenDocument Implementation”) in which development Sun participates to the point of incurring an obligation, as defined by the rules of OASIS, to grant (or commit to grant) patent licenses or make equivalent non-assertion covenants”. This has also been attacked in a pro-MS blog on the basis that “if Sun does not like the development of ODF it can hold up the development of the standard until there is certainty that it does not violate any of Sun’s patents. This is quite a big deal …”. I am not sure I quite follow the reasons why it is a big deal, but I can see that it suffers from similar problems to the IBM/MS approach.
I cannot get too excited about this debate. ISO/IEC require that licences to any necessary patents must as a minimum be made available on non-discriminatory terms, and MS has clearly opted for the covenant not to sue approach, so in practice either MS would extend its OSP to cover the revision, or the revision would have to be redrafted to avoid the relevant patent claims. It would be nice if MS took the view that an intergovernmental body like JTC1 was not going to absurdly over-extend a future revision of OpenXML simply to deprive MS of the benefit of its patent claims, and hence agreed upfront that the OSP covered all future revisions. But IBM and Sun have not yet gone much further than MS, so I cannot see why MS should be singled out for criticism on this point.
The second point of criticism (see, for example, Grokdoc) is that in the OSP the patent claims covered are those “that are necessary to implement only the required portions of [OpenXML] that are described in detail and not merely referenced”. The wording is infelicitous, but there appear to be two exclusions:
(A) patent claims necessary for parts of OpenXML that are not “required” parts; and
(B) patent claims necessary for parts of OpenXML that are merely referenced, not described in detail.
It is not clear to me what MS was trying to achieve by these exclusions, but they present a serious problem in the context of OpenXML because large parts of the standard are apparently optional and there are numerous references to material outside the standard itself. Accordingly, it is completely unclear at first sight, what effect these exclusions have.
The Common Guidelines (.pdf) which contain ISO/IEC’s minimal requirements on patent issues require “any party participating in the work” to “draw … attention to any known patent or to any known pending patent application, either their own or of other organizations”. There is the usual problem of poor ISO/IEC/JTC1 drafting, but this requirement clearly places an obligation on MS to disclose all relevant patent claims. As far as I know it has not done so, presumably on the basis that the OSP makes it unnecessary for anyone to negotiate a licence as envisaged by the Common Guidelines.
However, this basis falls apart if it is unclear whether the OSP does have this effect. So it seems fairly clear that MS must:
(1) remove these exclusions from the OSP; or
(2) clarify which patent claims are covered and which are not, so that it is clear how it has complied with the ISO/IEC requirements.
(2) may well lead national bodies to look carefully at which parts of the standard are “required” and which are not. In many cases there are alternative ways of representing the format of a document, one of which is meant to accommodate “legacy documents”. Suppose that implementation of these alternatives is not “required” parts by the standard (which appears to be the case), then they are apparently not covered by the OSP. So if they are covered by MS patent claims (which seems likely in at least some cases), then the only vendor who can implement them is MS or anyone whom MS chooses to favour with a licence.
However, the whole rationale for having this standard in addition to ODF is, according to MS, the way in which it allows legacy documents to be represented. So these “non-required” parts of the standard are actually absolutely fundamental, and it would be absurd, and quite contrary to ISO/IEC policy, to have a standard which only a single vendor (and its favoured associates) could implement (because of patent constraints).
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“Accordingly, it is completely unclear at first sight, what effect these exclusions have.”
… mission accomplished.
If you talk a look at the Wikipedia talk page here:
http://en.wikipedia.org/wiki/Talk:OpenDocument#Sun.27s_Patent_Pledge
you’ll see someone arguing that Sun’s Patent Pledge is not as unencumbered as it could and should be.
Essentially: “It says that Sun “will not seek to enforce any of its enforceable U.S. or foreign patents against any implementation of the Open Document Format for Office Applications (OpenDocument) v1.0 Specification”. That says nothing about later specs. Perhaps I’m just being over-suspicious, but it seems to me that Sun could enforce patents that it doesn’t enforce against v1.0 against a later spec - e.g v3.17 or whatever. I’d prefer your interpretation, but my natural suspicion makes me think otherwise. I’m sure the wording has been subject to very careful legal approval.”.
That interpretation of Sun’s pledge is clearly wrong. Your quote above leaves out the immediately following words “or of any subsequent version thereof”.
However, the Sun pledge does have a caveat about subsequent versions (that Sun has to have participated in their development).
I think I stick by the conclusion in the article - that MS is not, on this point, significantly out of line with best practice.
In the Wikipedia talk page referenced before that point is raised - I’m not sure if you read it - apologies if you did.
Sun’s pledge says “…or of any subsequent version thereof (”OpenDocument Implementation”) in which development Sun participates to the point of incurring an obligation,…”
“For example, if ODF 1.0 used method ‘foobar’ patented by Sun, the current wording means that Sun can enforce rights in relation to ‘foobar’ in ODF 3.7 if Sun have not participated in 3.7’s development. All they simply need[ed] to say is that any technology used in a version developed with the aid of Sun can be freely used in a later version not developed with the aid of Sun, but any new technologies in later versions not developed by Sun are susceptible to litigation. ”
The issue is that if Sun do not participate in the development of a subsequent version of ODF, Sun can enforce rights associated with intellectual property used in earlier versions that Sun did participate in the development of.
This isn’t to disagree with your conclusion - Microsoft does seem to be in line with current industry practice. However, current industry practice doesn’t look as nice as it could or should be.
It is interesting that Simon Phipps, Chief Open Source Officer of Sun Microsystems, says that this specific issue was raised when discussing the pledge with Sun’s lawyers, and their interpretation was at variance with the reading given in the Wikipedia talk page above.
As far as I can tell, no-one else has picked up on this - not even Groklaw!
Thanks for coming back. You are right, I had not read the interesting Wikipedia article when I replied to your earlier comment! Sorry, that was lazy.
So the scenario is that X in v1.0 requires a Sun patent, after v2 Sun stops participating and v3 is approved. It still contains X. Does Sun’s pledge still cover X, or is it entitled to enforce all its patent rights, including those relating to X, because it stopped participating?
It is clear that if B produces software which uses the v1.0 or the v2 format, then it is still entitled to rely on the pledge. But suppose it produces software which uses the v3 format, can it rely on the pledge for X? [It obviously cannot rely on the pledge for technology Y if that is covered by a Sun patent but was not in the standard before v3 when Sun stopped participating.]
The argument that it cannot rely on the wording is that it only covers “any subsequent version … in which Sun participates”. v3 is not such a version, so it does not cover implementations of v3.
The argument that it can rely is presumably that v2 is a subset of v3 and so that subset is covered.
I am inclined to agree with you that the matter is far from clear. My experience with UK litigation is that even where you are totally confident about the legal position you can still lose 10-20% of the time. Here there seems enough ambiguity for an experienced litigant to assess the chances of losing as rather higher. So yes, I think it would be highly desirable, in the event that Sun stops participating in ODF revisions, for it to clarify the position.
Thank-you for re-reading - I think you have succinctly described the situation, which seems, at the very least, to be open to interpretation. It would be good if Sun were to clarify.
By the way - thank-you for your blog - it has removed the fog around voting procedures and other areas very well indeed.
Having reflected on it a little more, I am inclined to think that, although it is unclear, the better view is that X in v3 would not be covered.
In other words, Sun goes a little beyond IBM and MS, in that their pledge automatically applies to later versions of the standard so long as Sun remains involved in the standards process, whereas the IBM and MS pledges only apply when they add the new version to the list.
So on this point MS is not out of line.
I also agree that it is interesting that Simon Phipps is apparently in favour of strengthening the Sun language so that everyone would (indisputably) get permission on X (but not Y) in v3. It would be excellent if Sun could be persuaded to make that change, and even better if IBM and MS could be persuaded to follow suit.
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