Example IPR License Terms

The goal of this license, using the words of the current video-codec charter, is to allow the contribution of IPR to a standard which "can be widely implemented and easily distributed among application developers, service operators, and end users. The objective is to produce a codec that can be implemented, distributed, and deployed by open source and closed source software and hardware vendors, without the need to request a license, enter into a business agreement, pay licensing fees or royalties, or attempt to adhere to other onerous conditions or restrictions." This goal, particularly the compatibility with open-source licenses, precludes many forms of normal IPR licensing, including the requirement for each licensor to explicitly request a license or perform some overt act to activate a license. The terms here also attempt to provide some amount of safety to those implementing standard from others also implementing the same standard, through the use of a defensive termination clause. Although this license is designed specifically for use with the video-codec effort, the terms have been kept generic enough to allow it to be used elsewhere.

___________ ("Licensor") hereby grants to you a perpetual, worldwide, non-exclusive, royalty-free, irrevocable (except as stated in the "Termination" section below) license to make, have made, use, sell, offer to sell, import and otherwise transfer any Implementation or portion thereof, under all Necessary Claims of Licensor (the "License").

"Original Specification" means draft-ietf-_______________. "Reference Implementation" means the implementation of the Original Specification made publicly available at ______________. "Specification" means the Original Specification or, at your option, any future update or new version of that specification issued as an RFC (Request for Comments) by the IETF (Internet Engineering Task Force). "Implementation" means any implementation (including the Reference Implementation) that complies fully with all non-optional portions of the Specification. "Licensee" means any party that has received the License, provided the License to such party has not been terminated under the "Termination" section below. "Necessary Claims" of a party means all claims of patents or patent applications that, (a) currently or at any time in the future, (i) are owned or controlled by such party or its Affiliates, or (ii) for which such party or its Affiliates has the authority to grant the License without the requirement to pay a royalty to any party other than an Affiliate, and (b) (i) for which there is no commercially viable means of implementing the Original Specification, including any optional portion thereof, without infringing such claims; or (ii) are infringed by the use of the Reference Implementation. "Affiliate" is any entity controlling, controlled by, or under common control with a party.

If you, directly or indirectly, including via an Affiliate, subsidiary, agent, or exclusive licensee, (a) file an action for infringement of a Necessary Claim, or (b) make any other written claim of infringement of a Necessary Claim, against any Licensee alleging that any Implementation, in whole or in part, constitutes direct or contributory patent infringement, or inducement of patent infringement, then any patent rights granted to you and your Affiliates under this License shall automatically terminate retroactively as of the date you first received the License.

The scope of the grant is defined by two pieces: a specific draft (the "Original Specification") and a specific implementation (the "Reference Implementation"). The idea is to cover both the algorithms and methods that are required for interoperability (e.g., for a video codec, the decoder specification), plus at least one set of algorithms and methods which can produce a useful implementation (such as an encoder, packet loss concealment (PLC) in the decoder, etc.). Although people may still compete on making more optimized decoders, better encoders or better PLC, they are guaranteed that use of the reference implementation, at least, is safe. The "Original Specification" and "Reference Implementation" which define the scope of the grant are also kept separate from the "Specification" and "Implementation" which define how the licensed claims may be used. This allows change control over what the standard says to remain with the IETF, while ensuring that the scope of the grant is not open-ended, so parties contributing their IPR know what they are giving.

The termination clause protects a Licensee from infringement claims by other Licensees. Any Licensee that tries to assert patent claims against another Licensee will lose their own license, and find themselves exposed to potential lawsuits from all other Licensees. This is designed to minimize defections after the standard is deployed.

The license currently does not define a "reciprocity clause", wherein Licensees give other Licensees an explicit license back to any IPR they might own. Instead it relies on the termination clause to achieve a similar, though not identical effect. Reciprocity clauses have become more normal in recent patent licenses, and it may be worth adding one here.

We have received some early feedback that our defensive termination clause may be too strong to qualify as RAND. Another alternative is defensive suspension, wherein parties simply agree not to enforce their patents unless they themselves are sued. We are still studying this issue.

Thanks to those who provided feedback on early drafts of this license.