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RE: [legalxml-sc] Proposed amendment to ROP

From: John Messing
To: [email protected]
Date: Tue, 26 Jul 2005 15:22:00 -0000

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Subject: RE: [legalxml-sc] Proposed amendment to ROP

From: John Messing <[email protected]>
To: [email protected]
Date: Tue, 26 Jul 2005 08:22:19 -0700

While I support the changes in principle I have a concern about it that
arises out of a claimed patent by a member of the eContracts TC as
assignee, that has been approved for publication by the US Patent
Office, but does not yet have the force of a granted US Patent.

See
http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=contract.DRTX%2CDETD.&s2=contentguard.DRTX%2CDETD.&OS=/contract+AND+/contentguard&RS=/contract+AND+/contentguard

To my understanding, any LegalXML standard could be argued to infringe
this patent application if and when it is granted because it claims
patent rights to legally expressed rights and duties, which LegalXML
standards may be determined judicially to involve at some stage or
other.

If the patent is granted, its term should be retroactive to the
publication date of March 2004, which will then be date from which
potential infringement will be determined.

I do not know if the patent will be granted, if the participation by the
assignee in one or more of our TC's should legally estop it from
claiming infringement, whether OASIS can or should intervene in the
proceeding to make the patent office aware of the situation or attempt
to negotiate beforehand with the assignee, whether a court would uphold
or strike down a granted patent, or whether some or all of our standards
will be ultimately determined to not infringe the patent if granted.

However, I am concerned that the work of the eContracts TC may be argued
potentially to infringe, and that a revived CourtDocument SC which
shared techniques and methods might then also be in jeopardy, and that
our TC's require guidance in light of this potential IP shipwreck.

I am also concerned that our current IPR policy which the revised ROP
extends for two more years may ultimately hamstring our future efforts
in light of this information.

Sorry to be the bearer of ill-tidings, but I think we need to confront
this development before we proceed further down the path.

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