Patent licensing is probably the most important aspect for all third parties that want to implement or use the Open XML specification. Unfortunately the Ballot Resolution Meeting cannot discuss these aspects because only technical and editorial issues would get resolved. We clarified it early in our article Think Technical that guided your comment preparation work in the National committees. The reason is simple: a Ballot Resolution Meeting needs to present a new specification proposal, a text. A resolution of patent issues does not change the specification text.
Standard bodies tend to keep the patent discussions out as they have no governmental competences, and do - despite of liaison agreement - not interface with patent institutions. Usually the standard parties need to agree on a licensing under "reasonable and non-discriminatory" fees for patents, better described as uniform fee conditions. RAND conditions are incompatible with the requirement of Open Standards (unless lobbied otherwise), and are inappropriate for an International Standards with an ubiquitous application. Everything beyond RAND is left to the parties involved and standard bodies do not make standard licensing models available for royality-free conditions. While OpenDocumentFormat (ISO 26300:2006) is available under a royality -free Covenant Not to Sue of SUN Microsystems the Open XML specification is covered by the Microsoft Open Specification Promise or a Microsoft Covenant Not to Sue. The latter models provides very little market confidence. We made the respective texts available on our site. Decide for yourself. A ECMA maintenance of the standard on which the parties failed to agree in Kyoto would mean that default policies of ECMA apply to later changed versions of the specification: RAND. It would be a matter of grace from Redmond to extent their questionable alternative patent models which they claim are royality-free also to later versions of the specification.
Groklaw did the nice job to dig for comments that address the patent problems and raised the important question: "What Will and Won't Be Discussed at February's BRM on MSOOXML"?. All these comments can only be resolved by unilateral moves from Redmond or the options listed below, not by the Ballot Resolution Meeting in Geneva.
ISO and IEC need to ensure all appropriate intellectual property declarations are followed and that any material referenced in the document is appropriately available to users of the document.
To be ensured/guaranteed non-alignment and independence of ISO/IEC 29500 from the corporative patents and licenses
1. Patents and Patent policy.
We do not think that comments should address only the text of the Standard itself. This important document will be given to end-users and implementers and they may find themselves tied to various patents, and property rights owned by the company that proposes this Standard.
While Microsoft, the originator of the document, has promised not to sue implementers of the specification (and this may reflect a good intention of the originator), a large fraction of it is nevertheless covered by patents owned by Microsoft. Since Microsoft still holds these patents and has not done anything to make them legally invalid for Open Source use, it is unclear whether this promise is trustworthy. It is at least not trustworthy enough to build a business on. More than that, Microsoft made its promise on the OOXML version 1.0, leaving anything possible for any future version that may follow in a short time.
Proposal: Following the patents policy of ISO, together with the expressed intention of Microsoft, a full and clear statement must be issued by Microsoft, according to the ISO procedures, infringing on the affected patents, or even the entire OOXML implementation, under a free reusable license, such as the Lesser GPL (LGPL). This gives implementers the irrevocable right to implement the OOXML specification. As an alternative, Microsoft should offer officially, through ISO, a patent promise, that unambiguously permits open source use, and unambiguously covers the present and all future versions of OOXML.
Need more clarity on the Open Specification Promise of Microsoft which claims it wont assert patent claims against those implementing OOXML.
All issues relating to IP, patents and access shall be examined in depth and irrevocable agreement obtained from Microsoft that all required access to information will be provided without monetary consideration, potential treat of legal action or issues relating to copyright. The provision of such information shall not be delayed or withheld.
OpenXML includes references to Windows functions that can be protected by intellectual propriety of Microsoft, for example reference to EMF and WMF (windows formats), but does not include references to PNG (Open standard format) used in Linux.
Possible IPR infringes
Include at beginning of specification a list of all Microsoft and non-Microsoft CNS's or OSP's that might help clarifying the legal background for implementing the specification and that will help ensuring full protection for the implementer, mentioning any issues regarding patents, royalties and copyrights whenever necessary.
Consider replacing the promise-not-to-sue approach by a patent grant, which translates better to the existing legislation.
As pointed out in the previous item, and as per the MOSP (Microsoft Open Specification Promise), only the Specifications included in that promise (Covered Specifications) are covered. It is therefore of the essence to add after the previous item that any future revisions of the original specification are equally included in that promise.
Even for a highly technical document the proposed standard is extraordinarily convoluted, idiosyncratic and lengthy, making any attempt at compliance difficult. Failure to comply by a developer may however expose the developer to an intellectual property infringement claim.
Microsoft should publish a stronger “open specification promise” which is not limited to only the “required” portions of covered specifications…. Richard Stallman, the author of the GPL and LGPL licenses, has publicly stated that relying on Microsoft's promise (this presumes accepting Microsoft's patents as valid) would violate the GPL (see http://www.eweek.com/article2/0,1759,1829728,00.asp ).
Stallman's remarks apply equally to the LGPL, the relevant provisions of which are identical to those in the GPL. Microsoft's website addresses the question of the GPL compatibility of the “Open Specification Promise” by refusing to take position on this question, stating only that the GPL “is not universally interpreted the same way by everyone” and “based on feedback from the open source community we believe that a broad audience of developers can implement the specification(s).” While it is certainly true that free software and open source licenses exist which are compati-ble with Microsoft's promise, the primary question is whether DIS 29500 can be implemented in derivative works of the LGPL-licensed OpenOffice software. It is not fair if only Microsoft can implement the standard directly in their office software while competitors have to use a different format internally and must rely on document format conversion utilities. … Microsoft should, in addition to the “open specification promise”, make any relevant patents it controls available under a license which is clearly compatible with GPL and LGPL.
The use of proprietary file formats within the Office Open XML standard appears to cause potential intellectual property ownership concerns.
What other possibilities remain to address the patent issues?
- The first option is the use of competition law, e.g. via Art 82 Ec treaty, cmp. e.g. C-241/91 ; C-418/01
- The second variant is the adoption of an interoperability privilege which deactivates patents for certain uses, for instance the famous provision in the proposed EU software patent directive
…, whenever the use of a patented technique is needed for a significant purpose such as ensuring conversion of the conventions used in two different computer systems or networks so as to allow communication or exchange of data such use is not considered to be a patent infringement.
- The third variant is a mandatory open standards regulation for public procurement. Some governments made interesting moves such as the Netherlands based on the EU European Interoperability Framework definition.
- The fourth variant is an unilateral move from Microsoft to improve the patent models.
- The fifth variant that strong national members insist on a RF policy and threaten to block the spec.
When you have a patent which covers Open XML and you refuse to license it, the standard process gets stalled. Large companies in the standardization process are reluctant to use that nuke option. Given the ambush that the software patent practice means today it is quite possible that Open XML infringes a patent and all parties eventually have an obligation to license it.