On OpenXML and IPR…

The grant of rights to the intellectual property contained in Open XML comes up in conversation from time to time, both within the national standards bodies and in forums on the web.

For a while now I’ve been trying to work out how best to share the details of the work that Microsoft has done in this area; it is an important topic from whichever angle you look at it. The comfort level of the community around this issue, and the simplicity of the way that the rights are granted, directly relate to how the final specification will be used when the ISO process is completed later this year.

One of the documents that I have been sharing with groups who have asked me questions on this topic is a simple FAQ that responds to many of the conversation points that have been raised.

I thought it might help if I just posted that FAQ on this site. So, here it is;

Executive Summary: Microsoft has made legal commitments to Ecma International, to ISO/IEC, and to all interested users and vendors that anyone can use and implement Open XML without IPR burdens. Microsoft believes that it is in everyone’s interest for this open file format to be available freely and easily for document exchange and preservation. When Microsoft submitted and turned over control of Open XML to the international standardization process, Microsoft also provided multiple options to ensure that its essential patents can be used by anyone, including OSS developers. These IPR commitments go beyond the requirements for ISO/IEC adoption of a standard, and ISO/IEC and Ecma have stated specifically that there are no IPR issues with Open XML.

Any Required Microsoft Patent Rights Are Available On A Royalty-Free, Perpetual Basis To All Implementers, And Both ISO/IEC And Ecma Have Publicly Declared that No IPR Issues Exist.

Microsoft made a patent declaration to Ecma and agreed to make any of its patents covering Open XML available consistent with Ecma’s “Code of Conduct for Patent Matters.” (See this link and this link)

Microsoft also submitted to ISO/IEC a “Patent Statement and Licensing Declaration Form.” The ISO/IEC form provides three checkboxes: (a) willing to license necessary patent claims on RAND-Z (royalty-free) terms, (b) willing to license necessary claims on RAND (royalty-bearing) terms, and (c) unwilling to license necessary claims under (a) or (b). (See link) Microsoft checked the first box. That means that if someone asks for a RAND-Z license to implement Open XML, we must provide such a license.

Microsoft also attached to its ISO/IEC patent declaration a commitment that implementers of Open XML would have the benefit of our “Open Specification Promise” (OSP) and our “Covenant Not to Sue” (CNS) as an alternative, if they prefer.

Microsoft thus has gone much further than what Ecma and ISO/IEC require. Both require that a company offer to license its necessary patent claims on RAND terms (which could include a royalty). Microsoft has instead offered all implementers their choice between (a) a negotiated RAND-Z license, (b) the OSP, or (c) the CNS, all three of which provide for royalty-free use of Microsoft’s necessary patent claims.

Indeed, Ecma and ISO/IEC have publicly stated that there are no IPR concerns with Open XML. In a document explaining the upcoming Ballot Resolution Meeting (BRM), ISO/IEC noted that IPR issues will not be discussed, because, “IPR decisions have previously been delegated by all the ISO/IEC and IEC members (NBs) to the CEOs of IEC and ISO/IEC, and they in turn have examined them and found no outstanding problems.”  (emphasis added). Ecma issued a similar statement. (Sec. 2.2).

Thus, to recap, because the BRM and comment process is designed to ensure that the specification is fully and correctly defined, and because ISO/IEC has found no outstanding IP issues, there are no IPR issues associated with Open XML that should raise concerns about implementation, long-term document retention, preservation, or accessibility.

Adoption of Open XML — Including By the Open Source Community — is Growing Exponentially, Underscoring that Developers and Customers are Comfortable that there Are No IPR Issues with Open XML. 

Thousands of developers, organizations, governments, and professionals spanning 67 countries and six continents have already expressed public support for Open XML and for its approval by ISO/IEC. (See OpenXMLCommunity.org and OpenXMLDeveloper.org) More than 2,000 members have joined OpenXMLCommunity.org, and hundreds of independent software vendors are developing solutions using Open XML.

A growing number of implementations of Open XML — including from open source developers – are becoming available, including those released by Apple (Mac OS X Leopard, iWork 08, iPhone), Adobe (InDesign), Novell (SUSE Open Office), Microsoft (Office 2007, Office 2003, Office XP, Office 2000), Mindjet (MindManager), Palm Intergen, OpenText (LiveLink), Dataviz (DocumentsToGo on Palm OS), NeoOffice, and Altova (XMLSpy), as well as those under development by Corel (WordPerfect), Gnome (GNumeric), Xandros, Linspire, Turbolinux, and others.  These implementations are now available on many platforms, including Linux, Macintosh, Windows, Java, .NET, and handheld devices (PalmOS, Symbian, Windows Mobile).

Key Aspects Of Microsoft’s OSP

Any required Microsoft patent rights are freely available to all developers and customers of
Open XML in either open source software or proprietary software.

By stating that the covenant is “irrevocable,” Microsoft has assured users that there will not be a change in company policy at any point in the future.

Vendors, distributors, and users of Open XML implementations benefit from the OSP just like implementers do. Consequently, there is no need for implementers to pass the promise on to others in their distribution channel, as it is always available to everyone directly.

No one needs to sign anything or even reference Microsoft to take advantage of the OSP.

This form of patent non-assert enables open source software implementations. It is especially convenient for open source software developers as there is no issue as to whether or not the IP is sub-licenseable.

The OSP applies whether a party has a full or partial implementation. Parties get the same irrevocable promise from Microsoft either way.

Leaders In The Open Source Community Have Applauded Microsoft’s Extensive IPR Commitments To Open XML.

“I am [] impressed with the new covenant, and am pleased to see that Microsoft is expanding its use of what I consider to be a highly desirable tool for facilitating the implementation of open standards, in particular where those standards are of interest to the open source community. … I think that this move should be greeted with approval, and that Microsoft deserves to be congratulated for this action. I hope that the standards affected will only be the first of many that Microsoft, and hopefully other patent owners as well, benefit with similar pledges.” — Andy Updegrove, Standards Expert and Industry Analyst 

“The Microsoft open specification promise is a very positive development. In the university and open source communities, we need to know that we can implement specifications freely. This promise will make it easier for us to implement Web Services protocols and information cards and for them to be used in our communities.” – RL “Bob” Morgan, Chair, Middleware Architecture Committee for Education (MACE) Senior Technology Architect, University of Washington

Microsoft’s OSP and CNS are Very Similar to the IPR Commitments of IBM and Sun for ODF and Other Specifications.

The OSP and CNS are very similar to IBM’s Interoperability Specification Pledge (applicable to ODF) and Sun’s ODF Patent Statement. 

Notably, in the key areas of (1) versions of the standard covered, (2) application to required and optional portions, (3) non-application to referenced technologies, (4) limitation to conforming implementations (or portions of implementations) of the specification, and (5) definition of “necessary claims,” the OSP is broadly similar (and in many cases identical) to the IBM and Sun IPR commitments.

This is further evidence that Microsoft’s IPR approach for Open XML is reasonable and common in the industry, and that attacks on it are baseless.

FAQs

Q: Why are you applying both the CNS and the OSP to Open XML?

A: To afford greater choice to the developer, implementer, and user communities. Microsoft formulated the CNS and made it available in October 2005. After working with a number of members of the OSS community, Microsoft fine tuned its covenant and launched its OSP in 2006. The OSP was created to facilitate easier, royalty-free access to a range of Microsoft technologies and IP, including the Open XML formats, by all developers across both proprietary and OSS platforms. We don’t know whether some will choose the OSP over the CNS, or vice versa, but again we wanted to make that an option for all rather than simply terminate the CNS when the OSP came along.

Q: Why doesn’t the OSP apply to things that are merely referenced in the specification?

A: It is a common practice that technology licenses focus on the specifics of what is detailed in the specification(s) and exclude what are frequently called “enabling technologies.” If we included patent claims to the enabling technology, then as an extreme example, it could be argued that one needs computer and operating system patents to implement almost any information technology specification. No such broad patent licenses to referenced technologies are ever given for specific industry standards. (See Andy Updegrove Comment (“[T]his is a common limitation ….”).

Q: Why doesn’t the OSP apply to all versions of the standard, including future revisions?

A: The Open Specification Promise applies to all existing versions of the specification(s) designated on the public list posted on this page, unless otherwise noted with respect to a particular specification (see, for example, specific notes related to web services specifications). This approach is common in standards licensing. Standards in the IT industry are generally dynamic, evolving over time through different versions to reflect the experience of implementation and deployment, as well as the changing nature of the environment. Since it is impossible for industry players to predict the future environment, they are generally unwilling to make an open ended commitment towards such unknown matters, such as future versions of a standard. Microsoft’s OSP, and IBM’s pledge, and Sun’s covenants address the issue of the applicability of the covenant or promise to future versions of their list of specifications. Microsoft and IBM limit the applicability to those specifications listed in the statement, which will be amended over time as new versions are developed. Sun, by contrast, limits the applicability of its statement to subsequent versions of any specification “in which development Sun participates to the point of incurring an obligation as defined by the rules of OASIS, to grant” a licence or issue a covenant. While the former approach reflects standard industry practice, there is obviously potential uncertainty in respect of future versions, until they have been incorporated into the list. The latter approach, however, also generates uncertainty, as the inquiry that the relying party has to undertake would seem onerous, i.e., about the nature of Sun’s participation under OASIS rules.

– Andy Updegrove: “As with traditional standard setting commitments, patent owners are wary about making open-ended promises, since in an extreme case a competitor could seek to extend a standard to describe part of, or all of a product of a patent owner, going far beyond what had been anticipated by the owner at the time that it made its commitment. Although there are differences from organization to organization, typically when a new version of a standard is approved, a member remains bound by so much of the standard as does not change, but is not bound by any new material that is added to it unless it is then a member, and agrees to do so.” 

Q: Why does the OSP cover only “required portions” of the specification?

A: This is commonplace in the standards industry and is also how IBM’s patent commitment works. Andy Updegrove: “This is the degree to which the great majority of standards organizations require a commitment.” But Microsoft’s commitment goes further by extending royalty-free access to the required elements of optional portions of the Open XML specification as well.

Q: Why doesn’t the OSP also contain a royalty-free copyright commitment?

A: Since Ecma owns the copyright in the Open XML standard and makes the standard freely available under copyright, a copyright license from Microsoft is not needed for Open XML.

Q: If you just give away the IP, why do you even bother with filing patents that relate to Open XML?

A: IPR incentive systems and patents provide individuals and companies with incentives to create and innovate. It is a common business practice to file patents on inventions and innovations. It often makes business sense and is common practice for companies to license patents on royalty-free terms, and/or contribute technologies on royalty-free terms to industry efforts such as standardization. Often such patents and royalty-free contributions can ensure the standards specifications are available on royalty-free terms, and “protect” implementers from individuals or companies not participating in the standards process who may wish to profit from the standard by charging a royalty.

Q: Is this OSP sub-licenseable?

A: There is no need for sublicensing. This promise is directly applicable to you and everyone else who wants to use it. Accordingly, your distributees, customers and vendors can directly take advantage of this same promise, and have the exact same protection that you have.

Can Microsoft revoke the OSP and does it ever expire?

A: No, Microsoft’s promise is an irrevocable promise. It is subject to some minimal restrictions that are industry standard.