FAQ on US Patent 5,838,906 and the W3C

Please note that this FAQ will be updated as further information becomes available.

Questions and answers

Q. Why is W3C making this FAQ available?

A. The outcome of the recent case of Eolas v. Microsoft in regards to US Patent 5,838,906, if upheld on appeal in its present form, may have implications for the World Wide Web. W3C believes that it is important that the Web community begin to consider the range of technical options available. To this end, W3C recently held an ad hoc meeting of its members and other interested parties, see the meeting report for details.

Q. What is W3C doing about this?

A. On 23 September 2003, W3C launched a Patent Advisory Group (a mechanism for addressing patent infringement risks to W3C Recommendations) to discuss issues arising from US Patent 5,838,906 in regards to HTML-related Working Drafts and Recommendations (see charter).

Potential solutions include, but are not limited to, changes to HTML-related specifications to avoid US Patent 5,838,906, a request for an analysis of the claims by W3C patent counsel or other legal measures as may be required.

W3C previously invited its Members as well as other key commercial and open source software interests to attend an ad hoc meeting, hosted by Macromedia, on Tuesday 19 August 2003 in San Francisco, California. The objective of the meeting was to begin to evaluate potential near-term changes that might be implemented in browsers, authoring tools, and Web sites as a result of the court case. Please refer to the report from Steven R Bratt, W3C Chief Operating Officer.

On 23 October 2003, acting on the advice of the W3C HTML Patent Advisory Group, W3C presented the United States Patent and Trademark Office with prior art establishing that US Patent No. 5,838,906 (the '906 patent) is invalid. Next on 29 October, W3C Director Tim Berners-Lee wrote an unprecedented request to US Under Secretary of Commerce for Intellectual Property James E. Rogan to take action to remove the patent to allow operation of the Web. Please refer to the briefing.

Q. How has the US Patent and Trademark Office responded?

The US PTO have announced that they will be conducting a re-examination of all claims relating to US Patent 5,838,906 citing "a substantial outcry from a widespread segment of the affected industry." The order signed by Stephen G. Kunin, Deputy Commissioner of the US PTO was issued on 30 October 2003.

Q. What are the intentions of the patent holder?

A. W3C has made efforts to contact the patent holder to determine their future intentions, but has not received any reply.

Q. What is the patent?

A. US Patent 5,838,906 "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document".

It was filed in October 1994 and granted in November 1998. The patent is owned by the University of California with licensing handled through Eolas Technologies.

Q. What does it claim?

A. The patent covers mechanisms for embedding objects within distributed hypermedia documents, where at least some of the object's data is located external to the document, and there is a control path to the object's implementation to support user interaction with the object. The implementation can be local or distributed across a network, and is automatically invoked based upon type information in the document or associated with the object's data. See the patent claims for details and for the precise scope of the patent.

Q. Is the patent valid?

A. The United States Patent and Trademark Office said that the W3C raised 'substantial issues of patentability' and ordered a re-examination of the patent. However, according to Patent Office procedures, the patent does remain enforceable during the re-examination period. W3C is not providing any legal advice to our Members or the public on the direct impact of recent developments. Those implementing technologies in this arena will have to seek their own legal counsel on particular implementations of W3C Recommendations.

On 26 February 2004 the USPTO issued a preliminary report rejecting all claims in the patent.

Q. What does that mean to the Web?

A. This may affect all Web pages involving dynamically loaded browser extensions that use external data and which feature some kind of interactivity. Such browser extensions are widely used today e.g. for integrating audio, video and interactive media applications into Web pages. This could therefore affect a large number of Web pages.

Q. Does W3C plan to ask the community for help in identifying prior art?

A. A number of people have contributed potential prior art to the public mailing list, but at this time, W3C doesn't expect to make a formal request for help in identifying prior art, although this remains a possibility, and was successfully used in the context of W3C work on P3P patent infringement allegations.

Q. What changes will there be to browsers and other Web software?

A. Microsoft have indicated to W3C that new copies of Microsoft Windows include a non-infringing version of their Internet Explorer browser software. The changes to the browser may affect a large number of existing Web pages. Existing copies of Windows are unaffected. W3C does not yet have any indication of what action, if any, other vendors of Web tools might take. In the longer term, should the court decision be upheld in its current form, some vendors have suggested that other action might be required.

At the W3C ad hoc meeting, there was widespread agreement that a solution is needed that minimizes the effects of changes to Web software, Web sites and the user experience. W3C will be updating this FAQ as further information becomes available.

Q. As a Web developer, what can I do?

A. Until more about the changes to browsers and other Web software has been announced publicly, it is impractical to be specific. W3C will update this FAQ as further information becomes available on changes to browsers and other Web software.

Q. What W3C specifications are affected?

A. Potential examples include HTML-related specifications.

Q. What can I do to get involved?

A. To enable the Web community to consider and contribute to the technical options, W3C has created a mailing list for public discussion on this subject, public-web-plugins@w3.org.

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Alan Kotok <kotok@w3.org>