Oliver Bell’s weblog

Several times over the last few months I have been asked why Microsoft has not made a stronger commitment to provide the necessary intellectual property for future versions of the DIS29500 (OpenXML) specification.

Our commitment is a very strong one, and at least as good if not better than most other standards commitments.  That said, we are going to go ahead and further clarify the commitment.

The commitment itself is at the bottom of this post, as a preamble I thought it might be worthwhile to look at other commitments being made in this area from Sun and IBM…

For example the commitment that Sun Microsystems make around patents that are needed to implement ODF reads;

“any implementation of the Open Document Format for Office Applications (OpenDocument) v1.0 Specification, or of any subsequent version thereof (“OpenDocument Implementation”) in which development Sun participates to the point of incurring an obligation, as defined by the rules of OASIS, to grant (or commit to grant) patent licenses or make equivalent non-assertion covenants.”

This makes a clear and bounded statement around the rights that developers have to the necessary patents and places a dependency upon Sun’s participation in the OASIS ODF technical committee.

IBM takes a slightly different approach in their Interoperability Pledge, they make a very simple statement on the issues of supporting future versions that reads;

“[IBM makes] this irrevocable patent covenant with regard to the Specifications listed below.”

IBM then backs this up in their FAQ;

“IBM will evaluate new versions or additional specifications for inclusion based on their consistency with the objectives of this pledge which is to support widespread adoption of open specifications that enable software interoperability for our customers, and may, from time to time, make additional pledges.”

Microsoft’s commitment in the OSP is comparable to the statement that IBM makes, in that it grants full rights to listed specifications and states that new versions of specification will be considered and added as necessary.

“This promise applies to the identified version of the following specifications [public list posted at http://www.microsoft.com/interop/osp/]. New versions of previously covered specifications will be separately considered for addition to the list.”

For developers wanting to use the ISO/IEC DIS29500 specification this has raised some questions around exactly what level of support Microsoft will pledge to future versions of the OpenXML specification as it continues to evolve through the ISO process.

This is an important issue, and to date I don’t think we have been clear enough around our intent in this area. This has come up in internal discussions several times recently and today a decision was taken to make a public statement to continue to make the intellectual property that developers or users may need available to future versions.

The statement will appear on http://microsoft.com shortly, in the interests of beating content management software to the punch I thought I would also post here. I know it has been an issue of some debate for many folks here in the Asia Pacific region.

The intent and objective that we have here should be clear. We believe that a broad ecosystem of developers supporting OpenXML is good for both the software industry and for customers, and our IPR statements should support that.

“As long as Microsoft participates in the revision process to completion, Microsoft irrevocably commits to apply the OSP to that future version of IS29500.”

Our intent here was to map as closely as possible to the approach Sun had taken (since that was the most common request we heard in our discussions with the community of potential implementers).

Given some differences in the wording of the underlying IPR policies that govern work at ISO and at OASIS, it was clear that we could not simply copy Sun’s language verbatim, so we had to craft some new language to obtain a similar result.

We believe the language we picked aligns very well to the commitment that Sun is making in its pledge relating to ODF in the context of the OASIS policy and rules, and since we know developers are happy with Sun’s statement we believe this additional step that we’re taking for OpenXML is a significant commitment to the growing community of developers and users of the DIS29500 specification.

As I say, it will be up on http://micrsosoft.com somewhere shortly, and I’ll add a link here when it is!

The ODF Alliance have been very active during the process to standardize OpenXML, in the early days they did some good work highlighting parts of the specification that needed work.

Of late though they seem to have given up promoting ODF or contributing to the OpenXML debate in any constructive way and have instead chosen to generate paper after paper that I can only assume are aimed at trying to confuse the process as much as possible.

A clipping from their front page today clearly shows the weighting of their current agenda with only three out of the current seven “New and Noteworthy” articles having anything  to do with promoting ODF.

As an example, one of the recently issued a papers is titled “Developers Beware, OOXML – IPR: Minding the Gaps and Why They Matter”. There is nothing new in the document, just a regurgitation of comments that have been raised, addressed and closed many times.

In this paper, the ODF Alliance ignores the requirements of the ISO/IEC patent policy [and the statements made by the ISO/IEC Central Secretariats] and argues that there are gaps in the Open Specification Promise Microsoft has made available to implementers of Open XML that leaves them at risk.

In fact, the commitments that have been made go well beyond the requirements of ISO/IEC, and the “gaps” hinted at by the ODF Alliance are at best illusory, as demonstrated by the fact that many developers, including OSS developers, are already implementing Open XML without any IP barriers.

I thought it might be useful to look at some of the fiction in this document and and examine the three points that The ODF Alliance raise in detail so I spent a little time with Steve Mutkoski (part of the original team who authored the OSP) to add a little reality back into this debate… a brief response to the ODF Alliance paper follows;

1. Microsoft’s commitments go beyond what ISO/IEC requires.

ISO/IEC’s patent policy requires those involved in developing a specification that hold patents needed to implement the specification to declare whether they are willing to license those patents on reasonable and non-discriminatory (RAND) terms. Microsoft has submitted a Patent Declaration and Licensing Statement to ISO/IEC that goes beyond the required commitment to offer a RAND license in two respects. First, Microsoft has agreed to offer, to any implementer, a RAND license without a monetary royalty (a so-called RAND-Z license). Second, Microsoft also provides implementers with an option to rely on one of two different patent non-assertion promises – the Open Specification Promise and a Covenant Not-to-Sue – that are free and do not require implementers to sign a license agreement.

2. The OSP covers all parts the Open XML specification.

Contrary to the ODF Alliance’s paper, the OSP covers all parts of the Open XML specification. Like many standards bodies’ IPR policies and patent non-asserts, the OSP excludes basic enabling technology and referenced documents. These exclusions are customary, as Andy Updegrove has noted (see below). IPR licensing obligations in standards bodies almost always exclude so-called “enabling” technologies (such as the fact that one needs a computer to implement OpenXML) – for example, see Section 8.2 of the W3C’s patent policy.

Similarly, referenced documents do not form part of the specification, and those that are existing standards are already covered by their own patent declarations that provide access to the patent rights needed to implement them – for example, see Section 2.12 of the OASIS patent policy. As a further example, Open XML references the ISO standards for country codes and time/date formats. The ODF Alliance misconstrues the OSP by taking the phrase “described in detail” out of context, when the OSP juxtaposes it with the phrase “not merely referenced”.

Andy Updegrove on the OSP:

“With this as an introduction, let’s take a look at the new Microsoft promise, both on an absolute as well as comparative basis. Here’s what it says, and what I take it to mean:

* * * *

‘…that are described in detail and not merely referenced in such Specification….’

While not usually phrased in this fashion, this is a common limitation intended to clarify that, for example, other standards that may be referenced, or so-called “enabling technologies,” the use of which would be required to use an implementation (e.g., the computer upon which the software is running) are not included.”

3. The OSP covers both semantics and syntax

In connection with the national body comment process, the Open XML specification has been revised to include semantic as well as syntactic requirements (requiring that schemas not only be read or written but that the data represented by that schema be correctly understood and acted upon by a compliant application). Thus, by its terms, the OSP covers both semantic and syntactic requirements. Moreover, the OSP applies to any portion of an implementation that implements any portion of Open XML. Thus, developers who only implement parts of the specification (either by design or as a result of errors) are still covered.

4. The OSP covers patents held by Microsoft’s subsidiaries

As the ODF Alliance’s document recognizes, the OSP covers both patents directly owned by Microsoft and also those controlled by Microsoft. This includes patents covered by Microsoft subsidiaries, as they are under the control of their parent company.

Last night I had the honour of sharing dinner with a couple of guys who have been very vocal throughout the current process to standardize OpenXML within ISO. They have added a lot to the debate, not always in a form that has been easy for myself and my colleagues to swallow, but they have pushed hard and for that we’re grateful.

As we come up towards the final hurdle of this particular part of the process I like to think that we can point to concrete examples of how their work has improved the OpenXML specification, and I hope they agree.

It was a pretty enlightening conversation (on several fronts) and somehow I walked away with a bunch of work that I need to do in response to some of the things we talked about, sometimes I’m just not that smart when it comes to avoiding adding items to my task list.

One of the questions that came up in conversation centred around the ability for the chap in the picture to the left to implement OpenXML, specifically if he had the IPR rights that he needed to implement and distribute an application or tools based upon the specification.

The answer is the same as the one for the 30,000 marathon runners yesterday. Under the Open Specification Promise he has been directly granted all the rights he needs to any intellectual property that Microsoft owns that he might need to implement or distribute his integrated OpenXML application.

Like some of yesterday’s marathon runners, I’m not sure this guy will do much with this particular grant of rights but if he ever decided he wanted to then he has all that he needs to go ahead and build out his application.

One of the great mysteries during the process to standardize OpenXML is where some of the news stories come from, especially when they are clearly not substantiated by facts. As I have spent more time reading some of the blogs on this topic I have slowly begun to understand how some of these stories spin up, I thought it would be fun to share one with you.

Two weeks ago one of the fringe sites that have sprung up during the process, NoOOXML.org, published a random list of patents held by Brian Jones, Microsoft’s member of Ecma TC45, pointing out that the list may or may not relate to Open XML, the article shared the same tone with similar articles and basically tried to spread a little more FUD around the topic of IPR and OpenXML. You will find it linked here.

Next step, Harish Pillay, Red Hat’s Chief Technical Architect in APAC appears to have copied that same list into a blog entry implying that this is all part of Microsoft’s ongoing evil plan. Harish’s post here is here.

And then a couple of days ago NoOOXML.org then picked up the article from Harish’s blog, seemingly having no recollection that they already posted this same list in a different context or that it came from them in the first place. They quote Harish’s findings and this time they identify the list as patents covering OpenXML rather than being attributable to Brian and posted them again with a new and more dramatic twist…. because that is where the interim posts had led them.

BINGO, out pops an attempt at a free news story! Funny stuff.

As I have discussed before this is all moot, but at least I’m starting to understand where “news” comes from.

Round and round we go.

Those who were present for the second half of the event that the University Of New South Wales CyberLaw centre organized late last year to look at OpenXML technical and legal questions will remember Steve Mutkoski’s presentation comparing the language in the Open Specification Promise with the OpenDocument Patent Statement from Sun Microsystems,  Interoperability Specification Pledge issued by IBM.

As a complement to that conversation Baker & McKenzie have posted a paper entitled “Standardisation and Licensing of Microsoft’s Office Open XML File Formats“;

This paper was commissioned by Microsoft and  seeks to address and clarify any misunderstandings in the industry, and among the wider general public, about both the standardisation process that Microsoft has embarked upon in respect of its Office Open XML Reference Schema, as well as the legal arrangements governing the use of the Schema by others.

From the document;

The following discussion examines both the CNS and OSP and compares them to similar instruments issued by Sun and IBM in connection with document format standards. What the comparison demonstrates is that all four instruments adopt broadly similar approaches to address certain common issues.The full text of all of these instruments is annexed to this note.

As I have mentioned before, this type of licensing is extremely important to the industry as a whole, providing a mechanism for any developer to be able to implement a specification without having to deal with original patent or rights holders.

You can download the paper from here.

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.