Page Comparison

Option: Patent & Copyright: Reciprocal Royalty Free with Opt-Out to Reasonable And Non discriminatory (RAND)

(Can be used for development of Technical Specifications or other output of a Work Group)

ARTICLE 1: DEFINITIONS

“Circulation Draft Technical Specification” shall mean a draft or release of a Draft Technical Specification circulated to the Participants after the Initial Draft Technical Specification and before the Final Draft Technical Specification. No IPR Review Period is associated with a Circulation Draft Technical Specification.

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• (a) more than fifty percent (50%) of whose outstanding shares or securities (representing the right to vote for the election of directors or other managing authority) are, now or hereafter, owned or controlled, directly or indirectly, by a party hereto or such third party, but such corporation, company or other entity shall be deemed to be a Subsidiary only so long as such ownership or control exists; or
• (b) which does not have outstanding shares or securities, as may be the case in a partnership, joint venture or unincorporated association, but more than fifty percent (50%) of whose ownership interest representing the right to make the decisions for such corporation, company or other entity is now or hereafter, owned or controlled, directly or indirectly, by a party hereto or such third party, but such corporation, company or other entity shall be deemed to be a Subsidiary only so long as such ownership or control exists.

ARTICLE 2: DEVELOPMENT LICENSES

Each Participant hereby grants to each other Participant a limited, irrevocable, non-exclusive, worldwide, no-fee, royalty-free right and license of such Participant’s Licensed Materials and under any of the Participant’s claims that would be Necessary Claims if the Licensed Materials were included in an Organization Recommendation Technical Specification solely to conduct the work of the Work Group up to the point at which the Members approve (or reject) a Final Draft Technical Specification recommended by the Work Group in question.

ARTICLE 3: COPYRIGHT

Each Participant hereby grants to all other Participants an irrevocable, perpetual, non-exclusive, worldwide, paid-up copyright license to reproduce, display, perform, prepare and have prepared derivative works based upon, distribute and sublicense its Licensed Materials included in the specific Organization Recommendation and derivative works thereof, including the right to authorize Subsidiaries to do any, some or all of the foregoing, and including under any copyright interest such Participant holds in the Organization Recommendation that is distinct from its copyright interest(s) in the Licensed Materials included in such Organization Recommendation; provided, however, that each Participant acknowledges that the Kantara Initiative seeks to act as the steward for defining and revising Organization Recommendations, and no Participant shall take any actions under the foregoing license, including but not limited to granting sublicenses to third parties, that would be inconsistent with this intention. The parties hereto acknowledge that works created by employees of the Federal Government are not subject to copyright protection within the United States and may be copied or used by interested parties.

ARTICLE 4: PATENT

4.1 If and to the extent a specific Organization Recommendation Technical Specification includes any Licensed Materials or is subject to any Necessary Claims of a Participant, the Participants grant licenses as follows:

• (a) Except as otherwise provided in Article 6, each Participant (on behalf of itself and its Subsidiaries) hereby covenants to grant to any other person or legal entity (whether or not such person or entity is also a Participant) a no-fee, royalty-free, nonexclusive, nontransferable, license under its Necessary Claims to implement the specific Organization Recommendation Technical Specification from a Work Group of which the Participant was a member when the Organization Recommendation Technical Specification was released by the Work Group, but only to the extent needed to be a Fully Compliant Implementation, and to make, use, import, sell, promote or otherwise distribute, directly and indirectly, the resulting implementation, which license may be made subject to the condition that those who seek licenses under this Section 4.1(a) agree to grant reciprocal, no-fee, royalty-free, non-exclusive, nontransferable licenses under their Necessary Claims to such Participant and all other parties necessary to implement the specific Organization Recommendation Technical Specification as a Fully Compliant Implementation. Except as set forth herein, the negotiation of licenses pursuant to this Section 4.1(a) shall be left to the parties concerned. Notwithstanding the foregoing, no Participant shall be required to grant a license pursuant to this Section 4.1(a) with respect to; ( i ) any enabling technologies that may be necessary to make or use any product or portion thereof that complies with an Organization Recommendation Technical Specification, but are not themselves expressly set forth in that Organization Recommendation Technical Specification (e.g. semiconductor manufacturing technology, compiler technology, object oriented technology, basic operating system technology, database technology, etc.); (ii) the implementation of other Recommendations, even if referred to in a Organization Recommendation Technical Specification; or (iii) any portion of any product and any combinations thereof the sole purpose or function of which is not required in order to be a Fully Compliant Implementation of an Organization Recommendation Technical Specification.
• (b) With respect to Necessary Claims that pertain to a specific Organization Recommendation Technical Specification from a Work Group of which the Participant was not a member when the Organization Recommendation Technical Specification was released by the Work Group, but where an individual acting on Participant’s behalf Contributed Licensed Materials, any Necessary Claims relevant to such Contributed Licensed Materials are to be licensed under Section 4.1(a) above.
• (c) With respect to Necessary Claims that pertain to a specific Organization Recommendation Technical Specification from a Work Group of which the Participant was not a member when the Organization Recommendation Technical Specification was released by the Work Group, where a draft of the Organization Recommendation Technical Specification had completed an IPR Review Period while such Participant was a member of the respective Work Group and where Necessary Claims were present in such draft of the Organization Recommendation Technical Specification, such Necessary Claims are to be licensed under Section 4.1(a) above.
• (d) Notwithstanding any provision to the contrary in this Article 4, including Section 4.1, use and license rights to the United States Government’s interest in any applicable patent rights developed in whole or part by its employees or contractors are subject to and governed by Federal law and regulation. Terms of this Option are applicable to Federal employees, agencies, or contractors to the extent that they do not conflict with Federal law or regulation, and if Participant is a Federal agency or contractor it agrees to use its best efforts to exercise whatever discretion granted to it by Federal law and regulation to make such patent rights available on terms consistent with the principles of this Option.

ARTICLE 5: DISCLOSURE OF PATENTS

5.1 During the IPR Review Period, each Participant shall disclose to the Leadership Council, in writing, the existence of any of its patent claims that it has determined would likely be Necessary Claims if the Draft Technical Specification were to become final and that are personally known to the individuals acting on behalf of such Participant with respect to the Draft Technical Specification, provided that it is understood and agreed that such individuals do not represent that they personally know of all potentially pertinent claims of patents and patent applications owned or claimed by the Participant they represent or any third parties.

5.2 The obligation set forth in Section 5.1 above does not, however, imply any obligations on Participants (collectively or individually) to perform or conduct patent searches. Further, nothing in this Policy nor the act of a Participant submitting, supporting, or approving a proposal for a Technical Specification shall be construed or otherwise interpreted as any kind of express or implied representation that such Participant does or does not hold any patents or patent applications which contain claims that cover such Technical Specification
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ARTICLE 6: WITHDRAWAL

6.1 Notwithstanding Section 4.1(a), (b) and (c), each Participant member of a Work Group shall have until 45 days after a specific Initial, Review or Final Draft Technical Specification is released by a Work Group for review by all Members (the “IPR Review Period”) to withdraw Necessary Claims.

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Notice. This Agreement is not intended to prevent a party receiving NCCI from using NCCI Residual Knowledge, subject to any valid patents and copyrights of the owner of such NCCI. NCCI Residual Knowledge means NCCI that is retained in the unaided memories of the receiving party’s employees or agents who have had access to NCCI.

ARTICLE 7: DISTRIBUTION OF DRAFT SPECIFICATIONS

7.1 A Work Group may decide by Work Group vote to circulate interim drafts or releases of Draft Technical Specifications to Participants for review and comment. Such Draft Technical Specifications shall be designated Initial, Circulation, Review or Final by the Work Group.

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