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Created: October 04, 2005.
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Sun Patent Non-Assertion Covenant for OpenDocument Offers Model for Standards.


Update Note 2009-06: An OASIS Non-Assertion IPR Mode (fourth option) was approved on 19-May-2009 and declared to be effective on 4-August-2009.

[October 04, 2005] On September 30, 2005 Sun Microsystems published a declaration of non-enforcement of its U.S. and foreign patents against any implementation of the Open Document Format for Office Applications (OpenDocument) v1.0 Specification or of any subsequent version of ODF. This non-assertion covenant is being praised as a creative mechanism for patent management in the OASIS open standards development context — a "model for patent protection that doesn't involve the glorification of software patents."

Sun's public non-assertion declaration may be summarized unofficially as an irrevocable covenant not to enforce any of its enforceable U.S. or foreign patents against any implementation of the OASIS OpenDocument specification; however, this commitment is not necessarily applicable to any individual, corporation, or other entity that asserts, threatens, or seeks to enforce any patents or patent rights against any OpenDocument Implementation.

Clarification of terms governing the use of the OASIS OpenDocument Standard is especially important because the final version of the Enterprise Technical Reference Model Version 3.5 published by The Commonwealth of Massachusetts and made effective on September 21, 2005 features the OpenDocument specification. As presented in the ETRM Version 3.5 Introduction and Information Domain final documents, the Commonwealth defines open formats as "specifications for data file formats that are based on an underlying open standard, developed by an open community, affirmed and maintained by a standards body and are fully documented and publicly available." Three (3) Open Format Technology Specifications are identified in ETRM Version 3.5: [1] OASIS Open Document Format For Office Applications (OpenDocument) v. 1.0; [2] Plain Text Format; [3] Hypertext Document Format v. 4.01.

The Sun OpenDocument Patent Statement was published apparently in response to a question about whether users of the OpenDocument standard would need to ask Sun for a [formal, explicit, executable] license, and whether users would have to give Sun a reciprocal license. Sun responded by updating its vintage-2002 OASIS IPR declaration with a clarification that no such license application or license paperwork are necessary. The non-assertion covenant is a public, blanket declaration asserting the freedom of anyone to implement the OpenDocument specification without needing to transact paperwork or otherwise to ask for Sun's permission.

Simon Phipps has characterized this move by Sun as one that "raises the bar on what it means to create a truly open standard; [the public declaration] promises not to enforce any patent in any country against any implementation of the OpenDocument format (ODF), [which] means that, unless you're intending to sue Sun in connection with ODF, you can use ODF with confidence and ignore the FUD.

Phipps notes that while Sun's declaration "is hugely important and re-assuring for ODF, it's even more important for open standards, as [ZDnet's] David Berlind points out. It provides an example of how to use patents in a defensive, open-source-friendly way... balancing the needs of the corporation to retain self-defence capability in the dog-eat-dog world of corporate IPR and the needs of open source developers to be freed from fear of legal attack."

The deep-dive into Sun's non-assertion covenant provided by Phipps identifies the key characteristics and innovative features of the agreement in the OASIS context. The declaration: (1) constitutes a blanket promise connected with ODF that's not restricted to particular facets or features; (2) is irrevocable; (3) is global valid in all countries and all jurisdictions insofar as Sun is concerned; (4) is not time-limited with respect to the past, present, or new features added to future versions of ODF [insofar as Sun is obligated under OASIS IPR rules]; (5) is reciprocal, allowing Sun to be able to take action to protect itself and the community, providing rock-solid safety for developers and end-users; (6) has no bureaucracy or paperwork; (7) is simple and clear; (8) makes no reference to essential claims which sometimes govern whether a waiver is applicable: the Sun statement applies regardless.

Two features of the non-assertion covenant merit further attention. First, as Phipps notes, this kind of declaration is "inexpensive for corporations to make [because it is] an expression of vision rather than the carefully gamed result of an exhaustive patent search and a technical analysis of its outcomes." Sun's OpenDocument Patent Statement does not identify any particular patents, or make legal declaration that it has some, or none: within the system of patent waiver, the (non-)existence of relevant patents and essential claims may be immaterial to the blanket non-assertion declaration. Blanket waiver of the right to enforce patents might be paraphrased like this:

"We may have applicable patents or patents pending or unpublished patent applications (or we may not); we are not saying. Furthermore, we do not intend to conduct a detailed patent search; if we do in the future, we will not be publishing the results. Rather than bothering our highly paid engineers to describe details about our intellectual property in relation to this standard, and incurring the legal risk of an incomplete disclosure, and providing information (to our competitors) not required by law, we simply elect not to enforce any essential claims inherent in our intellectual property within the scope of this declaration. Please do not ask us for a license: you do not need one, and we will not supply one, other than the text of the non-assertion declaration here published."

Some ingredients in the Sun OpenDocument model of non-assertion are thus similar (though by no means identical) to features of patent waiver used in W3C's patent policy and in the draft UN/CEFACT IPR Policy. Details vary, but the key diagnostic is whether detailed patent disclosure is required, and if so, under what conditions, and with what consequences for the party electing to disclose rather than waive.

In the W3C model, a Patent Policy document governs the handling of patents in the process of producing Web standards; the goal of this policy is to assure that Recommendations produced under the policy can be implemented on a Royalty-Free (RF) basis. While provision is made for a W3C member to exclude "specifically identified and disclosed essential claims from the overall W3C RF licensing requirements" and thus become subject to IP disclosure requirements, in practice, participating companies do not elect this option: the waiver is much easier. A potential disclosure obligation is satisfied if the holder of a claim has made a commitment to license any such relevant claim(s) under W3C's Royalty Free licensing requirements. Thus, W3C "Working Group participants are not required to disclose known patents as long as the participating organization commits to licensing those patents according to the W3C Royalty-Free License requirements."

The draft UN/CEFACT IPR Policy, drawing inspiration from W3C's patent policy, "is designed to promote the goal of enabling the implementation of UN/CEFACT Specifications without the burden of fees or restrictions. The Policy promotes this goal by requiring all participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement a final technical specification developed in that Forum Group ('Essential IPR')... The waiver is automatic, and is required as a condition of participating in the UN/CEFACT open development process. A Participant in a UN/CEFACT Forum Group can avoid the limited automatic waiver only by disclosing the content of its relevant IPR, and electing not to waive its rights to enforce such IPR, on or before one of the express 'Disclosure Triggering Events' set forth in the Policy... In summary, should a Participant seek to preserve its rights to enforce its IPR against implementers of a UN/CEFACT technical Specification, the burden falls squarely on that Participant to disclose its IPR." [Note: the June 2005 UN/CEFACT draft policy, arguably, did not contain adequate language for reciprocal licensing and defensive suspension; in relation to the Sun statement on OpenDocument, the relevant point of comparison is the use of "Waiver" in lieu of "Disclosure."]

Sun's public non-assertion declaration for OpenDocument participates in a zero-bureaucracy waiver model which makes patent searches irrelevant and license-transaction paperwork a non-issue. Under some "royalty free" license agreements there are still requirement for "some sort of action to register a license or act in some other way that limits redistribution of software that's trying to benefit from the protection." The Apache Software Foundation rejected the Microsoft Patent License Agreement for Sender ID in part because its terms impose "an impossible administrative burden on the open source development community." Many open source licenses are based upon The Open Source Definition (Version 1.9) where Clause 7 'Distribution of License' specifies that the rights attached to the program [here, to the specification] must apply to all to whom the [protected property] is redistributed, without the need for execution of an additional license by those parties.

A second feature of note in the Sun non-assertion covenant is the specific formulation of reciprocal terms: notice against any OpenDocument Implementation in the language "Sun's covenant shall not apply and Sun makes no assurance, covenant or commitment not to assert or enforce any or all of its patent rights against any individual, corporation or other entity that asserts, threatens or seeks at any time to enforce its own or another party's U.S. or foreign patents or patent rights against any OpenDocument Implementation." According to Phipps, this provides "rock-solid safety for developers and end-users" but "means that [Sun is] still able to take action to protect itself and the community it participates in."

The context for publication of the Sun OpenDocument Patent Statement is the OASIS Open Document Format for Office Applications (OpenDocument) Technical Committee, which operates under the rules of the older Legacy OASIS Intellectual Property Rights (IPR) Policy. OASIS released an updated Intellectual Property Rights (IPR) Policy effective April 15, 2005. However, TCs formed before April 15, 2005 may elect to continue work under the older 'Legacy' policy through April 15, 2007. Both the December 11, 2002 IPR statement and the September 29, 2005 "OpenDocument Patent Statement" from Sun are governed by "Legacy IPR Policy" rules, not by the 2005 OASIS IPR Policy.

While the 2005 OASIS IPR Policy Licensing Requirements (RAND Mode, RF on RAND Terms Mode, RF on Limited Terms Mode) mention a "non-assertion covenant" instrument as a functional equivalent to the customary patent license governing Essential Claims, the formulation for Disclosure Obligations does not (explicitly) mention the use of a blanket waiver, as was constructed in Sun's OpenDocument declaration, as a means by which to satisfy the explicit requirement to "disclose to OASIS in writing the existence of all patents and/or patent applications owned or claimed [...] that may contain Essential Claims." The new OASIS IPR Policy unequivocally and without qualification states that obligated parties must disclose specific information (variably) about issued patents, published patent applications, and unpublished patent applications: "the patent or patent application publication number, the associated country and, as reasonably practicable, the relevant portions of the applicable draft or approved OASIS Committee Specification or OASIS Standard."

The OASIS OpenDocument specification approved as an OASIS Standard describes a royalty-free, XML-based file format that covers features required by text, spreadsheets, charts, and graphical documents. OpenDocument provides a single XML schema for text, spreadsheets, charts, and graphical documents. It makes use of existing standards, such as HTML, SVG, XSL, SMIL, XLink, XForms, MathML, and the Dublin Core, wherever possible. OpenDocument has been designed as a package concept, enabling it to be used as a default file format for office applications with no increase in file size or loss of data integrity.

OpenDocument is now being supported in a variety of commercial and non-commercial software products, including: OpenOffice, StarOffice, KOffice, Abiword, eZ Publish, IBM Workplace, Knomos case management, Scribus DTP, TextMaker, and Visioo Writer.

Note: Nothing in this news story has been reviewed for legal accuracy, and thus, the content constitutes no official legal interpretation whatsoever; the text above will be modified if official information is received which warrants correction of any factually incorrect or misleading opinion stated here.

Full Text of Non-Assertion

Sun OpenDocument Patent Statement, submitted by Sun Microsystems, Inc., September 29, 2005

Sun irrevocably covenants that, subject solely to the reciprocity requirement described below, it 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, or of 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. Notwithstanding the commitment above, Sun's covenant shall not apply and Sun makes no assurance, covenant or commitment not to assert or enforce any or all of its patent rights against any individual, corporation or other entity that asserts, threatens or seeks at any time to enforce its own or another party's U.S. or foreign patents or patent rights against any OpenDocument Implementation.

This statement is not an assurance either (i) that any of Sun's issued patents cover an OpenDocument Implementation or are enforceable, or (ii) that an OpenDocument Implementation would not infringe patents or other intellectual property rights of any third party.

No other rights except those expressly stated in this Patent Statement shall be deemed granted, waived, or received by implication, or estoppel, or otherwise.

Similarly, nothing in this statement is intended to relieve Sun of its obligations, if any, under the applicable rules of OASIS.


  • "In raising ante on definition of 'open', Sun shuts its critics up." By David Berlind. From ZDNet Blog Between the Lines (September 29, 2005).

    "Earlier today, Sun officially released what it calls the Sun OpenDocument Patent Statement — a statement that basically amounts to a covenant of patent non-assertion that applies to anyone seeking to create or use an implementation of ODF. Taken in combination, there are three attributes that make the patent statement unique:

    1. Like previous patent grants by Sun and IBM, it's an irrevocable promise by Sun that guarantees developers and users that they won't be sued for patent infringement when using or developing an implementation of ODF. In a way, this does most open source licenses one better because those licenses don't explicitly contain patent grants. Just because something is available under open source doesn't necessarily mean that it doesn't infringe on someone's patent. Also, to be clear, just because Sun is promising not to assert its patents in this situation doesn't mean that someone else besides Sun won't claim patent infringement.
    2. Unlike previous patent grants by Sun and IBM, it doesn't list any specific patents. In other words, it basically says that whatever of Sun's patents an implementation of ODF may 'read on' (in other contexts, that would be 'infringe on') , Sun will not assert those patents against a user or developer of that implementation. Whereas other patent grants list specific grants, this non-assertion statement doesn't force developers or users to examine a list of granted patents in order to figure out if they can openly implement some specification (in this case ODF).
    3. Like previous patent grants and like open source, privity is not a requirement. In other words, users and developers don't have to document their execution of a license with Sun. Lack of privity (as a requirement) clears the way for sub-licensing — one of open source's most endearing traits.

    ... Via a telephone interview, Larry Rosen [see below], the attorney who wrote the book on open source, told me 'he was very pleased' by the development... Not only does Rosen's approval bode well for the non-assertion statement, it's an indicator that open source and free software advocates like what they see in what could be a new OASIS — one that's moving more in the direction of the completely royalty-free World Wide Web Consortium. This wind of change at OASIS comes on the heels of the appointment of Sun's Eduardo Gutentag as OASIS' Chairman of the Board barely two months ago..."

  • "Raising the Bar on Patents and Standards." By Simon Phipps. From SunMink (September 30, 2005).

    "To dive deeper on the key features:

    1. It's a blanket promise connected with ODF that's not restricted to particular facets or features - it doesn't just have a list of a few carefully-selected patents and leave you to wonder what's not granted. This is for me a key philosophical point. While I congratulate the gesture behind them, previous attempts at patent protection using the 'patent commons' approach glorify patents, forcing anyone who would benefit from the apparent protection to become a patent expert. A blanket statement like this just says 'no need to look, you're safe, Sun is on your side'.
    2. It's irrevocable. It's a promise you can rely on, regardless of changes in Sun and the industry.
    3. It's global. No games involving smiles in one country and attacks in places that don't hit the news so much.
    4. It's not time-limited — there's no 'everything before this point' clause. It extends into new features added to future versions of ODF all the time Sun continues contributing to its development.
    5. It's reciprocal (we won't sue you if you don't sue us). That means that we're still able to take action to protect ourselves and the community we participate in, despite providing rock-solid safety for developers and end-users.
    6. There's no bureaucracy. Some moves in the past have sounded generous but have required some sort of action to register a license or act in some other way that limits redistribution of software that's trying to benefit from the protection.
    7. It's simple and clear. There is no game being played.
    8. There's no essential claims language. Most statements like this one include language that says that you only get a 'waiver' if you've no choice but to infringe the patent. This statement applies regardless.

  • "Sun's Covenant in OASIS." By Lawrence Rosen. Author of Open Source Licensing: Software Freedom and Intellectual Property Law (with a foreword by Lawrence Lessig), and occasional critic of OASIS. Posted to various lists, including '' and ''. September 29, 2005.

    "In a welcome move toward open software standards in OASIS, Sun Microsystems has covenanted not to enforce its patents against implementations of the Open Document Format for Office Applications (OpenDocument) specification...

    This is a good thing because it allows the development of free and open source implementations of office applications without fear of patent infringement claims by Sun.

    Most important, because this is from Sun, a company that plays an important leadership role in many standards organizations, this is an example for other OASIS member companies to follow. It proves once and for all that patent holders in OASIS working groups can find reasonable ways to allow their patents to be implemented for software standards without demanding royalties or imposing burdens of license execution and restrictions on sublicensing.

    I hope that other patent holders will do the same for the OASIS standards to which they contribute.

    If they follow this lead, we will no longer have the spectres of patent infringement lawsuits and RAND-type licensing for software applications that implement OASIS standards. Both open source and proprietary software can thrive in that environment."

  • "Sun Steps Up to the Plate and Hits a Home Run." By [Pamela Jones and GrokLaw Staff]. In "Some Musty Old MS FUD Fails and Sun Does a Very Fine Thing." From GrokLaw (October 03, 2005).

    "[Sun] sent a new statement to OASIS... I read it and saw that they are absolutely not claiming any license requirements such as Jones pretended to see in the original wording, and I see clearly that there is no requirement to contact Sun to seek a license to use OpenDocument. It's a clear promise not to asserts patents at all on any implementation of the OpenDocumentFormat Sun participates in developing. Period. If you bring a patent infringement action over the OpenDocument Implementation, then Sun's promise ... well, as they say in New York, just fuggeddaboudit. It's universal, covering any enforceable patent, not just 'Essential Claims.' It's an excellent example of the defensive use of patents. It's a fine and complete answer to the Microsoft FUD.

    Thanks to Sun, we can be sure that OpenDocument format is unencumbered, and in a way that Microsoft can't match, or at least has not matched. I'd love to see Microsoft match this promise on its 'Open' XML, wouldn't you? For that matter, I'd be happy if every corporation would follow this Sun template. It is FOSS friendly, there are no worries about sublicensing, and to sum up, it's a green light to develop software on the OpenDocument OASIS Standard. What's not to like? I have looked and looked, and I see no down side...

    You know how you can tell the difference between a real blog and a corporate blog? Both will be wrong sometimes. Just like all media outlets, blogs make mistakes sometimes, because mere humans write them. But a true blogger tells you about the mistakes openly and honestly. On a corporate blog, it's more likely to be silence..."

Patent Pledges and the Patent Commons

Sun Microsystems' non-assertion covenant relating to FUD- and license-free implementation of the OpenDocument standard is one method among a growing number of creative strategies designed to limit the deleterious effects of patented technology embedded in standards. Sometimes it is difficult or impossible to avoid the use of patented methods in IT standards; more often, standards bodies face the problem of patent farming: deliberately influencing a standards organization to use a particular principle covered by a patent. Another approach to limiting the deleterious effects of patents in open standards is the creation of a patent commons. A patent commons may be conceived as a pool of contributed patents serving to quarantine possibly harmful agents in a place where they can be monitored and do no harm, but which may also serve as a collective arsenal for (threat of) use against patent trolls and other entities seeking to lay a patent royalty-extraction tax burden upon the software development community.

Examples of contributors to the 'Patent Commons' through non-assertion agreements and similar instruments:

Update Note 2009-06: OASIS Non-Assertion IPR Mode

For the OASIS Intellectual Property Rights (IPR) Policy approved on 19-May-2009 and declared to be effective on 4-August-2009, the OASIS Non-Assertion IPR Mode "requires all Obligated Parties to provide an OASIS Non-Assertion Covenant as described in Section 10.3."

Per Section 10.3. Non-Assertion Mode TC Requirements: 10.3.1. For an OASIS Final Deliverable developed by a Non-Assertion Mode TC, each Obligated Party in such TC hereby makes the following world-wide "OASIS Non-Assertion Covenant". [as follows:]

Each Obligated Party in a Non-Assertion Mode TC irrevocably covenants that, subject to Section 10.3.2 and Section 11 of the OASIS IPR Policy, it will not assert any of its Essential Claims covered by its Contribution Obligations or Participation Obligations against any OASIS Party or third party for making, having made, using, marketing, importing, offering to sell, selling, and otherwise distributing Covered Products that implement an OASIS Final Deliverable developed by that TC.

10.3.2. The covenant described in Section 10.3.1 may be suspended or revoked by the Obligated Party with respect to any OASIS Party or third party if that OASIS Party or third party asserts an Essential Claim in a suit first brought against, or attempts in writing to assert an Essential Claim against, a Beneficiary with respect to a Covered Product that implements the same OASIS Final Deliverable.

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