Re: [jakarta.ee-spec.committee] On the timing of patent grants

["Daniel Bandera" <bandera@xxxxxxxxxx>]

Mike,

I have been hesitant
to weigh in on this before I have spoken to Terry Carroll - IBM Legal Counsel,
whom as you know, is a member of the Eclipse Intellectual Property Advisory
Committee, but Terry is on vacation until the middle of next week.  As
I mentioned on the Steering Committee call yesterday, I have some questions
for Terry on (1) when inbound patent rights are best collected from participants,
(2) when and with what mechanism outbound patents (essential claims) are
best granted.   I have ideas that I want to bounce off Terry before
I bring them to this Spec committee, so I would prefer to wait before we
publish the Spec process more broadly.

Also, I can not
seem to find the Eclipse Trademark Licensing Agreement (EFTLA) referenced
in the current Spec process document, and I would like to examine it to
better understand its interaction-with/effect-on the Specification process.
 Can you please provide a link to the EFTLA?  Thanks.

Best regards,
Dan

Dan Bandera
(512) 286-5228
Program Director, FaaS, IoT, and Java
IBM Open Technologies, Austin, Texas
The OSGi Alliance ( osgi.org ) President and Board of Directors





From:
       Mike
Milinkovich <mike.milinkovich@xxxxxxxxxxxxxxxxxxxxxx>
To:
       Jakarta
specification committee <jakarta.ee-spec.committee@xxxxxxxxxxx>
Date:
       2018-06-19
04:49 AM
Subject:
       Re:
[jakarta.ee-spec.committee] On the timing of patent grants
Sent
by:        jakarta.ee-spec.committee-bounces@xxxxxxxxxxx

---

Steve,

Thoughts inlined below. 

On Jun 18, 2018, at 5:36 PM, Richard Monson-Haefel <rmonson@xxxxxxxxxxxxx>
wrote:

+1 on deleting the line

Also, I agree with everything that Steve
Millidge said about the TCK, patent grants, and Jakarta EE trademark. Patents
can be granted on passing TCK but TCK must be freely available.  Trademark,
on the other hand, can be pay to play if TCK is passed.

On Mon, Jun 18, 2018 at 8:14 AM, Steve
Millidge (Payara) <steve.millidge@xxxxxxxxxxx>
wrote:
+1 for deletion of the sentence although
the sentence when combined with the sentence above gets to the heart of
the “pay to play” argument.  However I think the requirement against
the pay to play approach is captured in the Open Standards section.
 
 
My objection to the wording is slightly
different to the argument as written below. My objection is that the patent
rights are granted by the trademark license which is only available on
commercial terms hence pay to play. 
 
I would not have disagreement with the
status quo that patent rights are granted on passing the TCK if the TCK
was available without charge. The problem with the status quo is that the
TCK is only available on negotiated commercial terms.
 
My position is that paying a trademark
license fee should be independent of granting the patent and copyright
licenses for the creation of Compatible Implementations which should be
possible without cost. Then it is a commercial branding decision whether
to license the Jakarta EE brand and it is up to the Eclipse Foundation
and the Working Group to build that brand and therefore make it commercially
attractive to license.

The reference to an Eclipse TCK License
was not intended to imply a requirement for a payment. It’s only meant
to imply that the terms are not open source. If we want to tie compliance
to a very specific version of the TCK, and add a requirement that the implementer
can only use that, then that’s not an open source license. 

I never intended to imply that there
would be a charge or royalty under the TCK license. I have always agreed
that access to TCKs would not require payment. (Well, I could be convinced
to restrict TCK access to Members, but I always think like that.)

All that said, I recently saw a Twitter
thread suggesting we have a two-tier compliance program: a free one for
anyone who passes the TCK and one which includes the logo. I have very
mixed feelings about that idea.  

 
I will leave it to the lawyers to cut
that Gordian Knot.
 
Steve
 
From: jakarta.ee-spec.committee-bounces@xxxxxxxxxxx<jakarta.ee-spec.committee-bounces@xxxxxxxxxxx>
On Behalf Of Mike Milinkovich
Sent: 18 June 2018 13:40
To: Jakarta specification committee <jakarta.ee-spec.committee@xxxxxxxxxxx>
Subject: [jakarta.ee-spec.committee] On the timing of patent grants
 
All,
The very last sentence of the spec
requirements document currently
reads: "The EFTLA will also be the mechanism by which Compatible Implementations
are licensed all patent rights granted by the Participants."
Many have pointed out that this requirements
has a lot of implications. However, I can't really revise it in any particular
direction at the moment because the lawyers have not yet agreed on whether
we want to continue the status quo, or do something new. The status quo
is that both patent rights and the trademark license require passing the
TCK. A more "modern" approach would be to tie only the trademark
to the TCK and that patent rights would be granted to all implementers
as soon as the spec is final. (Or something similar.) 
Oracle in particular will have a near-veto
on this particular topic because the trademark license for javax and the
spec names is tied to their level of comfort with the new spec process.
So if the Oracle people here have not yet discussed this with their colleagues
in Legal, please do so. 
I would like to publish this requirements
document. My suggestion for the moment is that we simply delete that last
sentence and go forward with the remainder of the document as is. A +1
on this suggestion would be appreciated. 
Thanks.

--
Mike Milinkovich
mike.milinkovich@xxxxxxxxxxxxxxxxxxxxxx
(m) +1.613.220.3223

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