Most companies in the IT Industry, including IBM, have a long-standing policy of licensing patents under “Reasonable and Non–Discriminatory” (RAND) terms when participating in standards setting activities.  This approach encourages participants to contribute more of their patented technology resulting in the adoption of the best technical solutions. Allowing the standards activities to proceed in this manner, while moving the discussion of patent licenses outside of the standards developing organization, permits company-to-company patent dialogue and encourages individualized solutions to patent license issues. 


The W3C Patent Policy Framework Proposal attempts to solve the patent issue by offering a choice of license modes to chartered working groups.  The following comments from IBM highlight areas in the current Patent Policy Framework draft that contribute to uncertainty and unfairness in the implementation of this policy.  IBM’s suggestions are offered to improve certainty for implementers of W3C specifications (Recommendations).


Even though a RAND only patent policy would be preferred, IBM will continue to work with the W3C to refine its patent policy.  IBM plans to continue its participation in ‘Royalty Free’ (RF) and RAND working groups whenever it makes good business sense.




The current W3C Patent Policy Framework Proposal does not provide certainty for specification developers and product implementers. This may dampen participation in specification development and adoption of W3C specifications while adversely affecting the progress of worldwide web development.


A W3C working group’s patent licensing mode should be decided at the time the working group is chartered and remain constant through acceptance and implementation of the resulting specification.   This approach simplifies the patent policy operation and potentially curtails, or possibly eliminates,  “royalty free reciprocity” and Patent Advisory Groups  (PAGs).


In addition, it is important that the minimum commitment by W3C members be RAND, accompanied by an option for patent owners to use their patent(s) defensively when a patent action is brought against them by a licensee.  Members could then provide patent license commitments with the assurance that they can use their patents defensively, when necessary. 


Finally, the commitment by all working group participants must remain in harmony with the original charter’s license mode.  This removes imbalances in the current Patent Policy Framework by eliminating a variety of devices for changing a working group’s license mode during specification development.   


These basic aspects of a revised Patent Policy Framework will contribute greatly to certainty and fairness for the W3C members and other implementers which will greatly enhance participation by members in W3C activities. 

Accordingly, the following is proposed:


1) Maintain a working group’s originally chartered patent licensing mode by eliminating the use of  “Universal Reciprocity” and reducing the frequency of  ‘Patent Advisory Groups’ invoked to change licensing modes.

2) Eliminate “Opt-Out” by owners of essential patent claims.

3) Allow W3C members to retain the defensive use of their patents.

4) Institute equivalence in patent licensing commitments for both working group Contributors and Non-Contributors (participants).




1) Maintain a working group’s originally chartered patent licensing mode by eliminating the use of  “Universal Reciprocity” and reducing the frequency of  ‘Patent Advisory Groups’ invoked to change licensing modes.


A consistent and fixed licensing mode does not exist for RF or RAND working groups.  The license mode can remain open or change at the completion of specification development.   Two mechanisms, ‘Universal Reciprocity’ and  ‘Patent Advisory Groups’ (PAGs), contribute to uncertainty when they initiate a change in a working group’s licensing mode.  


Under the current proposal, any member of a working group which has been chartered under a RAND licensing mode, may unilaterally offer RF licenses under one or more patents with essential claims to anyone who is willing to provide reciprocal rights to all implementers of a specification.  This will force the other participants, who will need a license under the offering participant’s patents, to grant RF licenses to all implementers under patents they were expecting to license under the RAND mode.  Since this violates the original RAND charter of the working group, a PAG would be initiated to determine whether the working group must be re-chartered under a RF licensing mode, potentially requiring all work expended on the specification to be discarded.


Similarly, under a RF licensing mode, non-contributing participants are permitted to provide RAND license commitments under essential claims.  However, a contributor or another participant, holding essential claims, can declare RF Universal Reciprocity.  This would either require all working group participants to offer RF licenses, or to initiate a PAG.  


These mechanisms lead to a substantial amount of time and resource being wasted.  The lack of certainty as to the ultimate licensing mode for a working group will cause participants to rethink joining or contributing to certain working groups.  To avoid this, participants should not be able to change ‘the chartered licensing mode’.


 If a working group starts as RF, the working group should stay RF.  Similarly, if a working group starts as RAND, it should remain RAND.  All participants of a working group should expect to provide licenses to essential claims under the charter’s defined licensing mode.


 Limiting or eliminating the use of PAGs will increase the efficiency of the W3C working groups and accelerate the creation of new specifications.  Universal Reciprocity and PAGs should not be employed to change the working group licensing mode.



2) Eliminate “Opt-Out” by owners of essential patent claims.


Working group participants would definitely prefer to know if licenses under essential claims of patents will be available.


Working group participants can be unexpectedly denied access under another working group member’s essential patent claims, through the process of opting out. (I.e. a member decides not to license certain essential claims and thus leaves the other participants, who have relied upon the working group’s licensing policy, exposed to a potential patent problem).  Presently, participants may Opt-Out as late as sixty days after Last Call.  Opt-Out promotes uncertainty for implementers of W3C Recommendations and should not be adopted.  Opt-Out is inequitable to conscientious participants who do not Opt-Out. The fear is that Opt-Outs will escalate over time, when participants become disadvantaged due to the Opt-Out practices of others.


Regardless of the licensing mode, RF or RAND, W3C Members should not Opt-Out of licensing essential claims.  Opt-Out should either be eliminated from the W3C Patent Policy or its utilization should be substantially limited.  Three approaches are available to move the patent policy towards more certainty.  (1) W3C members should refrain from participating in a working group, if it is likely they will prefer to not provide licenses to their essential patents.  (2) W3C members should identify specific patents, which are unavailable for licensing, prior to initiating their involvement in the working group.  (3) At the very least, patents issued through the termination date (Opt-Out date) should remain available for licensing to implementers if a work group participant terminates involvement in a working group.


3) Allow W3C members to retain the defensive use of their patents.


A patent owner does not retain the ability to terminate the patent license when a licensee initiates a patent action against the patent owner.  In certain circumstances, a patent owner will participate in a working group, commit its patents and subsequently find that a patent action is being taken against them by a licensee in an area where the original patent owner has no patents with which to defend itself.  The licensee who brought the action still enjoys the protection of the original patent owner’s license under the current rules of the current W3C Patent Policy Framework draft.


We propose that the original patent owner retain the right to withdraw or terminate licenses for patents with essential claims when a licensee institutes a patent infringement action against the patent owner. (This process only affects the party who has brought suit.  All other licenses remain in force.)


Maintaining the defensive use of patents will minimize unfairness and encourage patent holder participation in working groups. This concept has been used in other standards organizations and in open source licenses and should be added to the current W3C Patent Policy Framework Proposal.


4) Institute equivalence in patent licensing commitments for both working group Contributors and Non-Contributors (participants).


The licensing obligations of working group Contributors are differentiated from those of other working group participants.  Under both RF and RAND working group modes, a Contributor is not able to Opt-Out, while other participants can Opt-Out, through sixty days after the Last Call.  This has the effect of creating a class of observers in a working group who can obtain implementation lead-time advantages and patent license benefits while being allowed to withhold patent license commitments.


In a RF working group, only Contributors are fully committed to RF.  Other participants can avoid contributing to the specification, maintaining a RAND approach to essential claims.


In a RAND working group, Non-contributors are provided with potential leverage over Contributors, who are captive to the working group’s chartered licensing mode. As mentioned in item 1 above, in a RAND working group, both Contributors and Non-contributors (participants) are committed to RAND, but a Non-contributor can declare “RF Universal Reciprocity”, which may force the Contributor to license RF.  In the event such agreement cannot be reached, a PAG would address dissolution of the working group which necessitates rechartering the working group and reinitiating the technical work.


These differences between Contributors and Non-contributors should be eliminated by having all working group members make the same commitment to the license mode of the working group, resulting in a  “level playing field” for all working group participants.




Adoption of the defensive use of a member’s patents and the elimination of the patent policy aspects listed below would improve the effectiveness of the proposed W3C Patent Policy Framework Proposal: 

1) Ability to change licensing mode of working group

2) Opt-Out at late stages of working group

3) Unequal licensing requirements for working group contributors and participants


The above modifications to the W3C Patent Policy Framework Proposal would provide an equitable environment for the development of both RF and RAND Recommendations.