This post is part of an ongoing series. It expands on item 9 of Reforming Standardisation in JTC 1.

Background

Historically, patents have been a fraught topic with an uneasy co-existence with standards. Perhaps (within JTC 1) one of the most notorious recent examples surrounded the JPEG Standard and, in part prompted by such problems there are certainly many people of good will wanting better management of IP in standards. Judging by some recent development in document format standardisation, it seems probable that this will be the area where progress can next be made …

Most recently, the Fast Track standardisation of ISO/IEC 29500 in 2007/8 saw much interest in the IPR regime surrounding that text, with much dark suspicion surrounding Microsoft's motives. However, the big development in this space – when it came – was from an unexpected direction …

The i4i Patent

Back in the SGML days I remember touring the floor of trade shows and noticing the S4-Desktop product from Candian company Infrastructures for Information, Inc (i4i). Like a number of other products at the time (including Microsoft's own long-forgotten SGML Author for Word, or Interleaf’s BladeRunner) it attempted to make Word™ a structure-aware authoring environment, based on the (accurate) belief that while many companies wanted structured data they didn't want to have to grapple with pointy brackets.

Keen to avoid the phenomenon that Rob Weir describes whereby

I will avoid any punditry about the ongoing legal course of this patent. Those interested would do well to read IP lawyer Andy Updegrove's post (and follow-up) on the legalities of this matter.

On the technical merit of the standard though, there appears to me to be unanimity among disinterested experts qualified to judge. For example Jim Mason (for 22 years the chair of the ISO committee responsible for all-things-markup) commented:

This point was expanded on by markup veteran Rick Jelliffe, who concluded:

In a Guardian Interview i4i chairman Loudon Owen seemed to make it clear that the patent would not be licensed on a reasonable and non-discriminatory (RAND) basis (at least – or especially – where Microsoft are concerned):

The Wider Context

As part of its amicus brief (PDF) in the Bilski case pending before the Supreme Court, IBM offered what might be termed the orthodox pro-patent position. In a section headed “Software Patent Protection Provides Significant Economic, Technological, and Societal Benefits” we thus find a footnote quoting this text:

While it is somewhat surpising to learn here of the affinity between FOSS and patents, the point is of course that the idea of patents is not wholly without foundation: that a state-sanctioned restraint of trade (for such is a patent) is justified in allowing innovators to monetize their inventions. However, increasingly when we listen to the voices of actual FOSS (and non-FOSS) people the view seems to be that any advantages are outweighed by the problems of patents. For example Mike Kay (developer of the superb Saxon family of XSLT, XQuery, and XML Schema processing products) in an open letter to his MP argues against software patenting in a piece which is well-worth reading in its entirety:

And, in specific reference to the i4i patent:

More colourfully Tim Bray lists some horror-story cases (again well worth reading) and opines that the whole patent system is "too broken to be fixed". He also addresses the question of whether patent activity benefits society, and comes down firmly against:

The Myth of Unencumbered Technology

Given the situation we are evidently in, it is clear that no technology is safe. The brazen claims of corporations, the lack of diligence by the US Patent Office, and the capriciousness of courts means that any technology, at any time, may suddenly become patent encumbered. Technical people - being logical and reasonable - often make the mistake of thinking the system is bound by logic and reason; they assume that because they can see 'obvious' prior art, then it will apply; however as the case of the i4i patent vividly illustrates, this is simply not so.

Turning to document format standards, we can see there most certainly are known and suspected patents in play. For example:

• the i4i patent mentioned above (which, in his Guardian interview, the i4i Chairman refuses to rule out as applying to ODF)
• 45 unspecified patents which Microsoft has claimed OpenOffice.org infringes, some number of which may relate to the ODF specification (and which Sun and Microsoft agreed a cease-fire over until 2014 - at least as far as Sun is/was concerned)
• an unknown number of unspecified patents which have led IBM to include ODF under its Interoperability Specifications Pledge
• an unknown number of unspecified patents which have led Microsoft to include OOXML under its Open Specification Promise (though presumably clear OOXML-specific patents such as US Patent 7,676,746 are in scope here)

Now, as is clear from the above, large corporations have a preferred means of neutralising their IP stake in standards: by "promises", "covenants" and the like.

The question for standardizers remains: is the current situation acceptable? and if not, what can be done to improve it?

The ISO Rules (and Are They Followed?)

Since 2007 the "big three" International SDOs (ISO, IEC and ITU-T) have operated a common patent policy predicated on the wholly reasonable premise that standards should be "accessible to everybody without undue constraints". The policy is implemented in detail by JTC 1 (which joins the forces of ISO and IEC) and which – as we know – governs the International Standards ODF and OOXML.

The Policy as implemented in the Directives has several aspects, which I would categorise as falling under the following headings …

Personal Disclosure

Anybody aware of an IPR issue has a duty to speak out:

And indeed committee secretaries and chairs are routinely reminded by Geneva to issue a request for IPR disclosure at meetings, to jog people's memory.

Formal Disclosure in Standards

Readers of Standards can expect to have the IPR/patent situation made explicit in the text before them, and accordingly there are may textual items mandated for Standards to which patents apply. In particular it is stated, "[a] published document for which patent rights have been identified during the preparation thereof, shall include the following notice in the introduction:"

Centralised Record-keeping

A JTC 1 "patent database" (served as a huge HTML document) is maintained in Geneva which gathers together all the patents applying to published standards, and the terms under which patent holders have agreed to make licenses available.

Clear Access Rights

Patent Holders who have signed the licensing declaration to ISO, IEC or ITU-T agree to license their patents under a clear regime: either RAND, ZRAND (i.e. RAND with a free-of-charge license), or – exceptionally – on a per-case commercial basis. Anybody accessing the patent database is able to see this and, by referring to the ISO/IEC governing documents, know what it means, not least because no deviations from Geneva's wording are permitted:

Problem Handling

And if things go wrong:

Unfortunately, when we hold up the big two document standards of ODF and OOXML against the goals set out, we see there is work still to be done …

Moving Forward

While the "broken stack" of patents is beyond repair by any single standards body, at the very least the correct application of the rules can make the situation for users of document format standards more transparent and certain. In the interests of making progess in this direction, it seems a number of points need addressing now.

• Users should be aware that the various covenants and promises being pointed-to by the US vendors need not be relevant to them as regards standards use. Done properly, International Standardization can give a clearer and stronger guarantee of license availability – without the caveats, interpretable points and exit strategies these vendors' documents invariably have.
• In particular it should be of concern to NBs that there is no entry in JTC 1's patent database for OOXML (there is for DIS 29500, its precursor text, a ZRAND promise from Microsoft); there is no entry whatsoever for ODF. I would expect there to be declarations from the big US vendors who profess patent interests in these standards, and I would expect this to be addressed as a matter of urgency (perhaps in parallel with the publication of these standards' forthcoming amendments)
• In the case of the i4i patent, one implementer has already commented that implementing CustomXML in its entirety may run the risk of infringement (and this is probably, after all, why Microsoft patched Word in the field to remove some aspects of its CustomXML support). OOXML needs to be referred back to its committee (this may be JTC 1, not SC 34) for a decision on what happens next. My personal guess is that CustomXML will be left in OOXML Transitional (patent-encumbrance will be just one more of the many warning stickers on this best-avoided variant), and modified in, or removed from, OOXML Strict
• When declaring their patents to JTC 1, patent holders are given an option whether to make a general declaration about the patents that apply to a standard, or to make a particular declaration about each and every itemized patent which applies. I believe NBs should be insisting that patent holder enumerate precisely the patents they hold which they claim apply to ODF or OOXML, as this will give greater transparency about what is (or is not) covered and prevent the vague threat ("there may be patents but we're not saying what") which seems to apply at the moment.

There is obviously much to do, and I am hoping that at the forthcoming SC 34 meetings in Stockholm this work can begin. Certainly, anybody reading this blog post now knows there are outstanding IPR issues which we as standardizers have a duty to raise …