Document Format Standards and Patents

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


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

There is perhaps no occasion where one can observe such profound ignorance, coupled with reckless profligacy, as when a software patent is discussed on the web.

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:

[T]his technique did not originate with i4i. It was already established in other commercial products and was, in effect, standardized in ISO/IEC 8613, Office Document Architecture. ODA essentially described a binary format for word-processor document representation, which worked by pointers into a byte stream. Its original interchange format, ODIF, started as a representation of that structure, but it was extended to have an alternative SGML stream, exported by a process similar to that described in the i4i patent. So there was prior art, specifically prior art described in public standards.

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

By the end of the judgment I was left thinking "what interactive XML system with any links wouldn't be included in this?" which is utterly ridiculous.

I was creating SGML systems from 1989, and the i4i patent is just as obvious then as it is now.

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):

On licensing to Microsoft, Owen sounds on the edge of anger: "No. No. This is our property. We are going to build our business. There's no right for Microsoft to use it and go forward." But i4i could license it at some humungous, eye-watering price that Microsoft might have to pay, surely? No, says Owen.

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:

Given the reality that software source code is human readable, and object code can be reverse engineered, it is difficult for software developers to resort to secrecy. Thus, without patent protection, the incentives to innovate in the field of software are significantly reduced. Patent protection has promoted the free sharing of source code on a patentee’s terms—which has fueled the explosive growth of open source software development.

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:

The software business does not need incentives to innovate. If you don't innovate, you die. [...] [I]n the software business, patenting of ideas benefits no-one: certainly, it does not benefit society or the economy at large, which is the only possible justification for governments to interfere with the market and grant one company a monopoly over an idea.

And, in specific reference to the i4i patent:

recently an otherwise unsuccessful company has been awarded a similar [i.e. 9-figure] sum against Microsoft, for an idea which most people in the industry considered completely trivial and obvious.

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:

And here are a few words for the huge community of legal professionals who make their living pursuing patent law: You’re actively damaging society. Look in the mirror and find something better to do.

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 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:

any party participating in the work of the Organizations should, from the outset, draw their [sic] attention to any known patent or to any known pending patent application, either their own or of other organizations. (ISO Directives Part 1, Clause 3)

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:"

The International Organization for Standardization (ISO) [and/or] International Electrotechnical Commission (IEC) draws attention to the fact that it is claimed that compliance with this document may involve the use of a patent concerning (…subject matter…) given in (…subclause…).

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:

the patent holder has to provide a written statement to be filed at ITU-TSB, ITU-BR or the offices of the CEOs of ISO or IEC, respectively, using the appropriate "Patent Statement and Licensing Declaration" Form. This statement must not include additional provisions, conditions, or any other exclusion clauses in excess of what is provided for each case in the corresponding boxes of the form.

Problem Handling

And if things go wrong:

2.14.3 Should it be revealed after publication of a document that licences under patent rights, which appear to cover items included in the document, cannot be obtained under reasonable and non-discriminatory terms and conditions, the document shall be referred back to the relevant committee for further consideration.

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 …

Comments (21) -

  • Rob Weir

    3/11/2010 7:22:56 PM | Reply

    Look at how ISO/IEC/ITU states the disclosure requirement in their common patent policy:

    "Therefore, any party participating in the work of ITU, ISO or IEC should, from the outset, draw the attention of the Director of ITU-TSB, the Director of ITU-BR, or the offices of the CEOs of ISO or IEC, respectively, to any known patent or to any known pending patent application, either their own or of other organizations, although ITU, ISO or IEC are unable to verify the validity of any such information."

    "any known patent"?  Excuse me?  Where is the predicate?  Shouldn't it say "Any known patent that..." and then state some criteria?  Otherwise this is unrestricted and asks that you notify ISO/IEC of all ~10 million+ US patents or applications.  Go ahead, send them the link to the USPTO website.

    Notice also that they manage to define a patent policy without using the words "infringe", "implement", "claims", "require" or  "necessary".  Similarly, they do not state whether it requires that the ISO participant proactively search for patents, or only report what is personally known to them.  Combined, the omissions render their policy nearly meaningless.

    If you want to see what a real standards IPR policy looks like, you need to get out of ISO and look at something like OASIS or the W3C.  ISO has no way of creating, maintaining or guaranteeing open standards.  The only thing their process strives for is RAND standards.  It might be worth pushing for adding some of the best practices from standards consortia to the ISO system, but you'd be fighting against more than a little inertia.

  • The Open Sourcerer

    3/12/2010 8:20:56 AM | Reply

    Here's a thought.

    Similar to the way Trademark applications are handled, would it be feasible to offer a period whereby the standard is in some sort of "pending" state and put the onus on the patent holders to come forward and lodge their concerns or conditional approval etc. Failure to comment within this period would invalidate any future claims against implementations of this standard.

    Obviously this would need wide-scale support from Governments and would probably upset a lot of lawyers but hey!

  • Jesper Lund Stocholm

    3/12/2010 8:31:36 AM | Reply


    Failure to comment within this period would invalidate any future claims against implementations of this standard.

    I could imagine that rules like that would be in violation with a lot of constitutions world-wide - at least if they speak of "right to own property" or similar. You are effectively taking that right away from those holding the patents with your suggestion.

  • Rob Weir

    3/12/2010 1:15:15 PM | Reply

    @Jesper, I'm sure that would cause problems in some countries.  But ultimately few property rights are absolute.  We tend to treat them like they are, at any given point in time, but if they were absolute rights they wouldn't change over time, like they do.  For example, in the United States we once had a property right in human slaves.  

    Interestingly, Abraham Lincoln, the President who freed the slaves, also was issued a patent early in his career:

  • Jesper Lund Stocholm

    3/12/2010 1:26:40 PM | Reply

    Hi Rob,

    @Jesper, I'm sure that would cause problems in some countries.  But ultimately few property rights are absolute.  We tend to treat them like they are, at any given point in time, but if they were absolute rights they wouldn't change over time, like they do.  For example, in the United States we once had a property right in human slaves.  

    Well, I wouldn't compare the right to own slaves to the right to own a patent (I am not saying that you do). To own slaves was wrong from a very stright-forward "human-nature"-point of view ... I am not sure the same goes for software patents, and I would imagine that you guys would lose the right to keep and bear arms decades before IPR was redefined in relation to the US constitution.

    But - this might not just be an American constitutional issue ... in Denmark we are very picky on property rights as well (well, unless the Government wishes to expropriate your property to build a bridge, golf course or whatever), of course.


  • Rob Weir

    3/12/2010 5:28:29 PM | Reply

    @Jesper, we use the word "property" for things that are entirely different.  For example, the ownership of your "self", in terms of liberty, is one thing.  Ownership of  land (real property) is something else.  Ownership of other things (personal property) is another.    Ownership of "people" is another.  And ownership of "ideas" is another.  A lot of pain has been caused over the centuries by people who have confused these different things.  

    The general trend of civilization has been to draw circle around a person and the things that result from the sweat of his brow, and call those his property.  In some societies the circle is larger, and some it is smaller.  

    The inherent conflict is where that property right interferes with another person's liberty.  On the one hand, it is reasonable to have laws that prevent you from having the liberty to enter my home and take away my beer without my permission.   On the other hand, I cannot claim the the number "528323233" is my exclusive property and that no one else can use it for any purpose without my permission.  

    So who knows how people will look at patents in another 1,000 years. Remember, slavery wasn't a solitary phenomenon.  It was widely practiced, around the world, from antiquity until the modern era.  Sure, it is obvious to everyone now that it was a despicable practice and inherently wrong.  But at the time it was argued in favor of based on property rights, and legally enforced as such.  

  • Alex Brown

    3/14/2010 9:30:27 AM | Reply


    Of course there’s a complication in the policy requirement for International standardisation (in contrast to vendor-led consortium standardisation) because the principle participants are nations, not vendors – and so cannot be required to declare “their” IPR. I think it is right that National Bodies *should* be proactive here, but unfortunately there is little guidance on best practice for NBs – this will be the topic of another post in this series.

    However robust the IPR policy of any standards body is there is no protection against jack-in-the-box patent claims from those outside the process, as we see in the i4i case …

    @Sourcerer @Jesper

    If we could wave a magic wand and change International law the most obvious solution to this problem would be to outlaw software patents entirely. If there was a desire for such patents to remain, then another approach might be to get agreement that IPR embodied in whole or in part within International Standards could not be the subject of patent litigation.

    In my experience policy-makers have very little appreciation of the issues here, and where they do they import the experience of other industries (or the views they have heard from lobbyists) leading them to believe patents are some kind of key indication of innovation – the complaint in Mike Kay’s letter illustrates this problem well.

  • Jesper Lund Stocholm

    3/15/2010 1:36:19 PM | Reply

    Hi Rob,

    So who knows how people will look at patents in another 1,000 years.

    Obviously, but I'd be surprised if the perspective would change within the next 10.

    Alex: Why haven't you enabled nested comments on your blog?

  • Alex

    3/15/2010 1:45:36 PM | Reply


    This theme does not support nested comments ...

  • Jomar Silva

    3/15/2010 3:11:07 PM | Reply

    Hi Alex,

    Good to see that someone else is concerned with IPR issues at JTC1.

    A few months ago I've blogged about it (, and I confess that I really don't understand why ITTF declared that we didn't had " outstanding problems." on OpenXML. I really would like to know the name(s) of the responsible for that declaration, because someone there were terrible wrong (at least).

    I really believe that this RAND (or Z-RAND) thing from ISO simply don't work. A single example of it is that Cuba is an ISO member, but they can't license anything from US... so, how could this be considered NON-DISCRIMINATORY at all ?

    I think that IPR policies as the ones used by W3C and OASIS are a better option to everyone. They aren't perfect, but they're the best we have... and by the way, I believe that Software Patents are a terrible thing.

    Cheers from Brazil,


  • Paul E. Merrell, J.D. (Marbux)

    3/15/2010 3:11:29 PM | Reply

    Whether a patent constitutes "property" in the U.S. is an issue on which the Supreme Court has apparently never ruled. However, there is no question that the nation's founders viewed it only as a government-granted privilege, not a "property" right. The U.S. Supreme Court quoted Thomas Jefferson on the topic:

    Stable ownership is the gift of social law, and is given late in the progress of society. It would be curious then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from any body.

    VI Writings of Thomas Jefferson, at 180-181 (Washington ed.), as quoted in Graham v. John Deere, 383 U.S. 1, 9-10 n. 2 (1966), (a case decision notable for its discussion of James Madison's extensive efforts to persuade Jefferson that there should be government monopolies granted even for inventions and literary works).

    My own research over the years has convinced me that "intellectual property" is a rather unfortunate misnomer that grew out of the ancient English form of action called "trespass on the case," which began as real property law but later became a legal vice grips of sorts analogized to all manner of situations for which the English courts lacked precedents. The use of trespass on the case eventually extended to encompass patent and copyright issues.

    So it seems likely that the oxymoron, "intellectual property," was conceived because of the form of action used to decide cases involving patents and copyrights rather than any belief that a form of property was actually involved. The lawyers and judges of the time were well aware that legal fictions were being routinely created to apply trespass on the case principles where there was no actual property involved.

    But it is difficult to equate the legal fiction of an exclusive monopoly in the practice of an invention with a right protected by the 5th Amendment's Takings Clause, which prohibits government takings of property without Due Process and Just Compensation.  The Takings Clause protects the "Natural Law" right to own property. And as Jefferson so eloquently testifies, the Founders did not view patent ownership as a Natural Law right. Cf.,

    Jefferson's observation that patent rights may be granted or withheld is echoed in the Constitution, which grants Congress discretion to establish a patent system, or not. An argument that any Natural Law property right exists in a patent is at odds with the Congressional grant of discretion; if a patent were regarded by the Founders as a Natural Law right, one would expect the Constitution to require the issuance of patents rather than leaving Congress with discretion on that issue.

    As you would expect, there are legal scholars on both sides of the issue. I suspect all would agree that the Supreme Court has shied away from ruling on the question.

  • Alex Brown

    3/15/2010 4:43:24 PM | Reply


    At it is stated that ITTF knew of no outstanding problems with OOXML at the time of the Fast Track; I am sure this is right, and it accords with Geneva's studiously passive approach to IPR issues.

    Ironically, of all the document formats and vendors in play here, the ONE time it has been done properly was with DIS 29500, where Microsoft signed the ISO form granting Z-RAND licenses for implementations of this spec! As I mentioned, they have not followed-through with the published Standard.

    As for the Cuba, this makes an interesting case. There are always (I suspect) going to be cases in an International system where antagonism between countries (or such things as international sanctions, or wars) will muddy the waters. In such cases I think the fine points of document format IPR are probably going to be outweighed by bigger issues like poverty, injustice, tyranny, violence and sundry other problems of inhumanity.

    I agree the W3C and OASIS IPR policies are far from perfect (though in different ways to JTC 1). Are you wholly satisfied with the completeness of IPR disclosure at: ?

    I agree that unfortunately, given the patent system we have, only defensive measures are possible.

    Hope all is well in Brazil ...

  • Rob Weir

    3/16/2010 2:13:04 AM | Reply

    @Paul, Jefferson, though he expressed his sentiments eloquently, was ineffectual in getting his views on intellectual property (or for that matter slavery) enacted into law.  And the president who did get the job done to end slavery, Lincoln, was himself an inventor and was granted a US patent.  His words are inscribed on the Commerce Department building in Washington, DC:  "The patent system added the fuel of interest to the fire of genius".  So you have your president; I have mine.

    @Alex, I think you misunderstand how OASIS standards treat IP.  The Sun nonassertion that you link to is a private pledge that they have made.  IBM's Interoperability Specifications Pledge and Microsoft's Open Specification Promise are other non-assertion statements regarding ODF 1.0 and ODF 1.1 that are not listed on their own web sites.  But these are private undertakings, not required by the OASIS process.  If you want to understand the OASIS part of it you need to read the "RF on Limited Terms" obligations in the OASIS IPR policy.  The protections that implementors of ODF 1.0 and ODF 1.1 have are the combination of all private non-assertion pledges and the OASIS terms.

  • Alex Brown

    3/16/2010 7:24:20 AM | Reply


    I'm probably wrong - but I understood an OASIS TC's IPR page was a window onto the IPR declarations made in that committee's work -- in the recent announcement of the public review of "The State of ODF Interoperability" it is stated:

    OASIS invites any persons who know of any such claims to disclose these if they may be essential to the implementation of the above specification, so that notice of them may be posted to the notice page for this TC's work ...

    Does that mean reviewers should report IBM's and Microsoft's private covenants during reviews?

    Were Microsoft obligated for the purposes of IPR covenanting during the creation of ODF 1.0 and 1.1? (Presumably they are now.)

    I confess I haven't looked in any detail at OASIS IPR policy, since getting my head around the JTC 1 stuff took enough time, so any insights are welcome!

  • Rob Weir

    3/16/2010 11:50:59 AM | Reply

    @Alex, I think you are mixing up 'disclosure' and 'declaration'.  If you read the OASIS IPR policy you'll see that disclosure is very specific concept, and involve specific patents.  There are defined disclosure obligations and a defined process for handling such disclosures.  

    If you read the non-assertion statements, you'll see that all three of them (Sun, IBM and Microsoft) clearly state that they do not represent that these companies actually have patents that read on the covered specifications.  So you cannot read these statements as an acknowledgement that there are known patents that have not been disclosed.  The pledges clearly state the opposite.

    IMHO, these kinds of non-assertion declarations are a very good thing.  They are not a substitute for listing specific patents where they are known, but they provide an additional blanket protection.   Take Microsoft, for example.  I'm reading that they have something like 10,000 patents or patent applications.  If you look at their OSP page you see that they cover a large number of specifications, including some rather large and complex ones like OOXML.  Even if they made an effort to check every patent against every standard (and there is no obligation, in OASIS, Ecma, W3C or ISO do do a patent search) they would inevitably miss something.  Ditto for any other company.  But the blanket non-assertion pledge gives that additional security.  

    So I recommend that you read over carefully the OASIS IPR policy and understand how that works.  I think you'll agree that it is far more comprehensive than anything ISO is able to do.

  • Paul E. Merrell, J.D.

    3/16/2010 8:47:46 PM | Reply

    @Rob: "Jefferson, though he expressed his sentiments eloquently, was ineffectual in getting his views on intellectual property ... enacted into law.

    Excerpts from the Supreme Court's John Deere opinion cited and linked above:

    "Thomas Jefferson, who as Secretary of State was a member of the [original Commissioners for the Promotion of Useful Arts], was its moving spirit and might well be called the "first administrator of our patent system." ... He was not only an administrator of the patent system under the 1790 Act, but was also the author of the 1793 Patent Act."

    "Because of his active interest and influence in the early development of the patent system, Jefferson's views on the general nature of the limited patent monopoly under the Constitution, as well as his conclusions as to conditions for patentability under the statutory scheme, are worthy of note."

    "Because of the "abundance" of cases and the fact that the investigations occupied 'more time of the members of the board than they could spare from higher duties, the whole was turned over to the judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful.' [Jefferson] Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the board that the courts should develop additional conditions for patentability. Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson's draft of the 1793 Patent Act."

    "The Hotchkiss [case decision's] test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the courts by Congress."

    Short story: Jefferson is widely recognized as the father of the U.S. patent system. How you acquired the notion that Jefferson "was ineffectual in getting his views on intellectual property ... enacted into law" is beyond me. Might you enlighten me?

    Also, I see no cognitive connection in your discussion of Jefferson and Lincoln with the topic I addressed, whether the U.S. Constitution views patents as "property." I'd appreciate your clarification on the connection you perceive.

  • Rob Weir

    3/17/2010 12:05:05 AM | Reply

    @Paul, I can't prove a negative, so I'll turn it to you to defend your assertion.  The gist of your Jefferson quote is near the end:

    Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from any body.

    So I'll put it you:  in what way has this view become the law of the land?  How has this been enacted into legislation?  Where do we see patent rights abrogated for the "convenience of society"?

    I don't buy your argument that property is only property if it is covered by the 4th Amendment, but since you mention it, courts have interpreted the compulsory licensing of 2 USC 1498 as an eminent domain taking.  See, for example, Gargoyles, Inc. and Pro-Tec, Inc. v. The United States

    The Lincoln quote was in response to your argument from authority, and points out that there is more than one authority worth quoting, and unlike Jefferson's, Lincoln's quote is on the facade of the Commerce Department, of which the USPTO is part.

    In any case I do agree that intellectual property is a different thing than real or personal property.  Whether any of this is property by natural right, or whether all property is a social convention, is not a very interesting question to me.  We can certainly point to societies, even in our lifetime, where  private ownership of real property was not recognized.  And there was the extreme example of ancient Sparta.  So I cringe whenever I hear someone talk about "natural rights", as if other societies, organically and consensually formed, are somehow not "natural".

    You seem to be saying that patent rights are not absolute.  To that I ask, what property rights are absolute?  If you merely say that some rights which you call "natural rights" are absolute, but not always observed, then I think you are not saying anything but "My views are right because they are natural, and they are natural because I believe they are true".

  • Paul E. Merrell, J.D.

    3/17/2010 10:24:19 AM | Reply

    @Rob: "So I'll put it you:  in what way has this view become the law of the land?  How has this been enacted into legislation?"

    In the Constitution itself, Article 1 section 8 clause 8. Congress is granted the power to create a patent system but is not required to do so.  As Jefferson wrote, "this may or may not be done, according to the will and convenience of the society, without claim or complaint from any body." Congress chose to exercise that power, but would be within its constitutional power to abolish the patent system next week (not that it will).  I doubt you'd find any lawyer who has studied the issue who would tell you otherwise.

    @"I don't buy your argument that property is only property if it is covered by the 4th Amendment".

    Fifth Amendment, not the Fourth. And you've got it backwards

    "[p]roperty interests . . . are not created by the Constitution. Rather, they are created and their dimensions are defined by existing rules or understandings that stem from an independent source such as state law. . . ."

    Webb's Fabulous Pharmacies, Inc. v. Beckwith, 449 U.S. 155 (1980), (.) That is, property is only protected by the Fifth Amendment from government taking if the right asserted as a property right stems from a source other than the Constitution and is recognized as a property right.  

    @"courts have interpreted the compulsory licensing of 2 USC 1498 as an eminent domain taking.  See, for example, Gargoyles, Inc. and Pro-Tec, Inc. v. The United States."

    Two problems there: [i] that's not a Supreme Court decision (my point was that the Supreme Court has apparently not yet decided the issue); and [ii] whether a patent is "property" in the constitutional sense was not an issue squarely decided in that case insofar as the court's opinion discloses. The case involved interpretation of a statute, not of the Constitution.

    Congress in 28 U.S.C. 1498 decided to waive sovereign immunity and allow lawsuits against the U.S. for patent infringement. But Congress could next week decide to withdraw that waiver of immunity and limit the scope of the patent monopoly to allow government use of patented technology without any infringement of the patent right. See e.g., 35 U.S.C. 271 (defining at some length as a statutory matter what constitutes patent infringement).

    @"Where do we see patent rights abrogated for the 'convenience of society'?"

    We saw a recent example in the Federal Circuit's Bilski decision, based on a reinterpretation of the statute defining patentable subject matter, cutting the legal legs from under many business method and software patents now subject to challenge as improvidently granted.

    @"The Lincoln quote was in response to your argument from authority, and points out that there is more than one authority worth quoting, and unlike Jefferson's, Lincoln's quote is on the facade of the Commerce Department, of which the USPTO is part."

    So the Lincoln quote had nothing to do with the topic I raised, the issue of whether patents are property within the meaning of the Constitution, correct?

    @"So I cringe whenever I hear someone talk about 'natural rights', as if other societies, organically and consensually formed, are somehow not 'natural'."

    You misunderstand the concept and I doubt you'll find many contemporary "other societies, organically and consensually formed," whose founding documents do not draw heavily from Natural Law.

    Like it or not, our Constitution is the work product of people who bought very heavily into Natural Law, a legal philosophy developed over several thousand years. See e.g., (highlighting the theory's evolution from Socrates, Plato, and Aristotle to date). As society struggled to escape the Rule of Man, Natural Law provided an essential philosophical basis for the Rule of Law, that just law derives from Nature (and for some from Nature's Creator) and the consent of the governed, rather than from the whims of a monarch.

    John Locke's view of Natural Law propounded in his 1689 Two Treatises on Government was seemingly tailored especially for American colonists who sought justification for ending their rule by the British Crown because Locke had articulated a philosophical right of revolution when government denied "natural" rights such as life, liberty, and property.  The U.S. Declaration of Independence, for example, speaks directly from Locke's view of Natural Law when it proclaims:

    "We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. — That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed, — That whenever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their Safety and Happiness."

    Those words are followed by a bill of particulars listing examples of the claimed violation of the colonists' Natural Law rights by the Crown.

    You can't get very far in understanding the U.S. Constitution -- which vests sovereignty in the People rather than in the limited government they allow through their representatives --- without a fair understanding of Natural Law theory as it existed in Europe and North America in the late 1700s. Certainly, you'd have a hard time today getting a passing grade in Constitutional Law 101. Smile

    @"You seem to be saying that patent rights are not absolute."

    No, although that is a true statement. I'm saying that the legal issue of whether patent rights are property rights within the meaning of the Constitution or mere privileges granted by government (licenses) is an issue the U.S. Supreme Court has apparently never decided. I make no prediction how the Supreme Court would rule on that issue; I argue only that if one looks to the Founder's intent, such an inquiry favors a non-property ruling. On the other hand, the Supreme Court has on occasion blinked past Founder's intent to achieve a contrary result. (Endless list of examples omitted.)

    I raised the issue because earlier comments seemed to assume that patents were recognized as an established property right. In the U.S., that's apparently an open question.

    @"then I think you are not saying anything but 'My views are right because they are natural, and they are natural because I believe they are true'."

    No. The relevant Natural Law philosophy has nothing to do with what I think is natural. It is a legal philosophy propounded by others and embodied in the Constitution by its drafters. You have completely missed what Natural Law is. I recommend the Wikipedia article linked above as a quick introduction to a very deep subject, with particular attention directed to the "Liberal natural law" section. Enjoy.

  • Rob Weir

    3/17/2010 1:48:39 PM | Reply

    Paul, I don't think it is accurate to say that patent rights were created by the Constitution.  Rather, patent were already issued in many of the American colonies, in some cases as early as the 17th century.

    You are correct that everything in Article 1, Section 8 of the Constitution is stated as "The Congress shall have the power...", including printing money, building roads, raising an army, collecting taxes as well as granting protection via copyright and patent.  So in theory Congress is free to do none of these.  But at that point I think you would find that one or more States would step in and offer patents of their own, just has we have a U.S. Army as well as the Texas State Guard, federal roads as well as state roads,  federal as well as state trademark registration, etc.

    In any case I think you misread the original Jefferson quote.  When he writes of "the moral and mutual instruction of man, and improvement of his condition" and "an encouragement to men to pursue ideas which may produce utility" he is using language that sounds very much like what we call "beneficial utility", which was the doctrine that a patent application could be rejected if the patent office believed that the patent was not in accordance with public morals.  So there was a period of time when patents on things like gambling machines were rejected.  This doctrine never really caught on, mainly due to the recognition that patent examiners are by training experts in technology, not morals, and the moral implications of an invention may not be evident until many years after a patent is granted.  So today, patents are not summarily rejected at the "convenience of society" and "without claim or complaint from any body."  Bilski does not contradict that, since that case did not involve a question of utility, but of whether business methods are statutory subject matter for a patent.

    So I'm looking for you to provide an example, say in the last 25 years, where a patent was rejected based on anything like a "convenience of society" argument.  However, if you argue that anything that a court or legislative body does is for the "convenience of society", I think you are making a very weak argument, essentially reducing Jefferson's quote to a banal observation .  I think there is more to Jefferson's quote.  But I think it is based on a doctrine of beneficial utility that has pretty much been rejected.  

    The only case I know of where something cannot be patented purely based on its social or moral impact -- and I need to stretch the definitions a bit -- is the prohibition, since the 1950's, of patents on nuclear weapons-related technologies.  But this is not to prevent inventions in this area, but merely to prevent their publications.  The same statute requires that confidential reports of those inventions be submitted to the government.

  • A. Rebentisch

    4/2/2010 1:35:09 PM | Reply

    Which gets back to my original suggestion to standardize license/indemnification models, and legally indemnify adopted ISO/IEC standards from attack by undeclared patents e.g. via the WTO road...

  • Andrea Stone

    4/12/2010 10:43:33 PM | Reply

    If you want to see what a real standards IPR policy looks like, you need to get out of ISO and look at something like OASIS or the W3C.