Commentary

• "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 'license-discuss@opensource.org' and 'legal-discuss@apache.org'. 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:

• Computer Associates
• IBM
• Nokia
• Novell
• Open Source Development Labs (OSDL)
• Red Hat
• Sun Microsystems
• OSGi Alliance — with Nokia, IBM, Samsung, Makewave, and ProSyst Software
• Google Data APIs Patent License
• Open Web Foundation (targets non-assertion agreements)
• OAuth Non-Assertion Covenant and Author's Contribution License For OAuth Specification 1.0

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.

Principal References

• OASIS Open Document Format for Office Applications (OpenDocument) TC: IPR Declarations
• OASIS IPR:
  • OASIS IPR Policy. Reference page.
  • Legacy OASIS Intellectual Property Rights (IPR) Policy. The OASIS OpenDocument TC operates under the Legacy IPR Policy.
• W3C and UN/CEFACT patent policies:
  • W3C Patent Policy Activity
  • Overview and Summary of W3C Patent Policy. "...The policy requires public disclosure of patents and patent applications if someone in a Working Group developing a W3C Recommendation has 'actual knowledge' that the patent contains claims that may be essential, and that person does not agree to the W3C Royalty-Free License requirements. No one is required to perform a portfolio search in order to satisfy the disclosure requirement..."
  • "Draft Intellectual Property Rights Policy for UN/CEFACT." United Nations Centre for Trade Facilitation and Electronic Business (UN/CEFACT). June 17, 2005. Reference identifier: TRADE/CEFACT/2005/MISC.3. Submitted by the Bureau. This draft document is for information under agenda item 6 of the provisional agenda. The document is circulated for review and comments by the Special Contact Group set by the Bureau.
  • World Wide Web Consortium (W3C)
  • "Progress on Intellectual Property Rights (IPR) Policy. Explanatory Note by the UN/CEFACT IPR Special Contact Group (SCG) of the Bureau." For the Eleventh session, 22-23 June 2005. See the context context.
  • UN/CEFACT IPR Policy
• OASIS OpenDocument:
  • OpenDocument. Article from Wikipedia.
  • OASIS OpenDocument Essentials. Online book. By J. David Eisenberg.
  • Open Document Fellowship
  • OpenDocument v1.0 specification: PDF and OpenOffice.org XML format.
  • "OASIS Open Office XML Format TC Approves Committee Draft Specification."
  • "OpenOffice.org XML File Format."
  • OASIS Open Office XML Format TC home page
  • TC Charter
  • TC FAQ document
  • TC List archives
  • TC Comment archives
  • TC document roster
  • TC comment form
• Software Support for OpenDocument:
  • OpenDocument Applications. From Open Document Fellowship
  • Applications Supporting OpenDocument. Listing from the WikiPedia article.
  • ITD FAQ document. The FAQ mentions OpenOffice, StarOffice, KOffice, Abiword, eZ publish, IBM Workplace, Knomos case management, Scribus DTP, TextMaker and Visioo Writer.
  • OpenOffice.org. "OpenOffice.org is a multiplatform and multilingual office suite and an open-source project. Compatible with all other major office suites, the product is free to download, use, and distribute."
  • eZ publish
  • KOffice: Integrated Office Suite. KOffice is a free, integrated office suite for KDE, the K Desktop Environment.
  • StarOffice 8. "StarOffice 8 adopts the OASIS (Organization for the Advancement of Structured information Standards) OpenDocument format. This further increases the interoperability of StarOffice as files can be exchanged with any application that also uses the OASIS XML file format. Also, export your documents to Adobe PDF: convert your files to the popular PDF format directly from StarOffice. You'll enjoy using the new PDF hyperlinks, table of contents, document outline, document notes, PDF controls, and tags."
  • IBM Workplace. Software solutions covering: Data and Information Management; Organizational Productivity, Portals, and Collaboration; Wireless, Voice, Pervasive. See statement from Nathaniel S. Borenstein and Simon Phipps.
  • AbiWord. "AbiWord is a free word processing program under the GPL which runs on Linux, Mac OS, Microsoft Windows, ReactOS, SkyOS, and other operating systems."
  • Scribus. "Open Source Desktop Publishing for Linux/*NIX. The Scribus file format is XML based; open and completely documented. Version 1.2.2+ supports OpenOffice.org 2.x/Star Office 8.x (OASIS) as well."
  • TextMaker. "Comes with capable XML import filters for OpenOffice.org and OpenDocument and reads and writes RTF (Rich Text Format) files."
  • Visioo-Writer. "Visioo-Writer is a free OpenOffice.org and OpenDocument file viewer. The project [goal] is to create a multi-operating sytem, multi-language, fast and simple to use program, for the smallest possible size."
  • [TBD]
• Selected Blog entries:
  • "More on the royalty-free licenses for the Microsoft Office Open XML formats." By Brian Jones (Micrsoft). September 22, 2005. While we're on this topic, I think "...it's important that you all take a look at the comparable situation with Open Document. A lot of folks just seem to assume that since it's a standard, there are no IP issues and everything is very straightforward. Well, take a look at this ["Statement regarding IPR, submitted by Sun Microsystems, 11 December 2002"]... Sun seems to be saying that it may have IP in the Open Document spec. While Sun says it is willing to provide a royalty-free license, one would still need to ask Sun for a license. The license is not posted... The statement on the site alone reveals that at a minimum, they have at least one condition — you have to give Sun a reciprocal license..." [Note: Sun's OpenDocument Patent Statement of September 29, 2005 provides an update and clarification.]
  • "Follow-up on comments from the royalty-free license discussion." By Brian Jones (Micrsoft). September 25, 2005. See itemized point #2 "2. The OpenDocument format has IP and needs to be licensed from Sun." [Note: Sun's OpenDocument Patent Statement of September 29, 2005 provides an update and clarification relative to the "Statement regarding IPR, submitted by Sun Microsystems, 11-December-2002."]
  • "More On Sun's Patent Grant." By Peter Zura. From Peter Zura's Two-Seventy-One Patent Blog. October 04, 2005.
  • See also: "Open Document Commitment to Action." By Bob Sutor (IBM). October 11, 2005. "They are your documents: you should be able to do whatever you want with them, whenever you want, with whatever application you wish to use." See the slide. Six elements of Open Document Commitment: (1) "Insist today that the provider of your office applications (word processor, spreadsheet, presentation software) is committed to support the OASIS OpenDocument Format for Office Applications standard in their products by January 1, 2007. (2) Insist today that the office applications you deploy allow users to easily set the OASIS OpenDocument standard as the default 'save' format for your documents. That is, you should not have to go to a lot of trouble to avoid using proprietary formats. (3) Get a commitment from your office applications provider to join and contribute to the OASIS OpenDocument standard technical committee. (4) Ask your CIO when you will be able to use office applications that support the OASIS OpenDocument standard. (5) Ask your local and federal governments when they will be supporting the OASIS OpenDocument standard. (6) Insist that any XML document format you use is not encumbered by proprietary extensions, and that the format is freely available for anyone to implement without restrictions, including open source communities that use a GPL license. Ensure that if implementers must accept a license covering the format, the license is clear and unambiguous on these important issues."