Subject: Filing a third-party IPR disclosure

From: Stewart Bryant <[email-masked]>
Date: Mon, 22 Jul 2019 14:55:02 +0100

I need to file a third partly IPR disclosure on work that I did with a 
previous employer.

I went to the third party disclosure page and input the information that 
I knew. I only know the Company, two of the inventors and the subject. I 
do not know the patent number or date. The form used to accept best 
effort disclosures like this, but now will not permit submission without 
the patent number and filing date.

The form implies that failure to provide the patent number and date 
result in a non-conformant submission.

What is the correct method of disclosing IPR when you only have partial 
information?

- Stewart

---

From: Alexandre Petrescu <[email-masked]>
Date: Mon, 22 Jul 2019 16:42:06 +0200

Le 22/07/2019 à 15:55, Stewart Bryant a écrit :
> 
> I need to file a third partly IPR disclosure on work that I did with
> a previous employer.
> 
> I went to the third party disclosure page and input the information
> that I knew. I only know the Company, two of the inventors and the
> subject. I do not know the patent number or date. The form used to
> accept best effort disclosures like this, but now will not permit
> submission without the patent number and filing date.
> 
> What is the correct method of disclosing IPR when you only have
> partial information?
> 
> - Stewart
> 
> 

I would use the right keywords in a paying patent search engine, come up
with the document number(s) and circulate that publicly on the WG email
list, in a hope that the careful will do further search and
identification of relevance.

Also, I would report the red starred mandatory fields as a bug to the
implementers of the page (presumably [email-masked]) on
grounds that the Third Party concept (Tiers États, fr.) carries an
approximation in itself: it means somebody else than the important ones;
given such an approximation it would make sense to approximate the
mandatoryness and remove some of the red stars.

As a last resort, I would fill in a number that is, or looks like, more
experimental (patent numbers follow a certain convention, they should
cover somehow dummy numbers, maybe something like "WO1970/000000 A1")
and as date I would put January 1st 1970, the Epoch.

Alex

---

From: John C Klensin <[email-masked]>
Date: Mon, 22 Jul 2019 10:51:03 -0400

Alexandre,

In many or most cases, third-party disclosures are
discretionary.  Why should we make providing one so burdensome
that it discourages people, especially people for whom it is
optional, from making the disclosures.

Let's just fix the form back to where it was or, if there is a
good reason for not doing so, have that reason explained to the
community and see if there is consensus that the action is
reasonable.

  john

--On Monday, July 22, 2019 16:42 +0200 Alexandre Petrescu
<[email-masked]> wrote:

>> I need to file a third partly IPR disclosure on work that I
>> did with a previous employer.
>> 
>> I went to the third party disclosure page and input the
>> information that I knew. I only know the Company, two of the
>> inventors and the subject. I do not know the patent number or
>> date. The form used to accept best effort disclosures like
>> this, but now will not permit submission without the patent
>> number and filing date.
>> 
>> The form implies that failure to provide the patent number
>> and date  result in a non-conformant submission.
>> 
>> What is the correct method of disclosing IPR when you only
>> have partial information?
>> 
>> - Stewart
>> 
>> 
>

---

From: Brian E Carpenter <[email-masked]>
Date: Tue, 23 Jul 2019 02:53:04 +1200

Hi,

The rules say "An IPR disclosure must include the following information to the extent reasonably available to the discloser...". (https://tools.ietf.org/html/rfc8179#section-5.4.1 ).

So the form should allow empty fields for the case that the information is *not* reasonably available to the discloser. (Did you try entering "unknown" in the form?)

Regards
   Brian Carpenter

---

From: Henrik Levkowetz <[email-masked]>
Date: Mon, 22 Jul 2019 18:18:33 +0200

Hi,

Some thoughts here:

 - I believe the most recent changes to the form, which firmed up validation
   of several fields, happened before RFC 8179 was published.  If I look at
   RFC 3979, the text is stricter.
   (https://tools.ietf.org/html/rfc3979#section-6.4.1)

 - Given the text in RFC 8179, it seems reasonable to make the form more
   lenient for third party disclosured.

 - However, it seems prudent to point out that the person doing the disclosure
   may well be the best person on the planet to actually be able to ferret
   out which patent is the applicable one; anybody else trying to use
   incomplete form information to identify the right patent could find it
   impossible.

In order to be in line with RFC 8179, I'll add an action to remove the
patent number field validation for third party disclosures.

Best regards,

	Henrik

---

From: Keith Moore <[email-masked]>
Date: Mon, 22 Jul 2019 12:23:48 -0400

>     incomplete form information to identify the right patent could find it

I would not want to put that responsibility on a third-party filer, 
though.   Sometimes there are multiple patent applications, in one or 
more countries, covering a single invention.  Sometimes patent 
applications sit in various stages of approval for months or years 
before any patents are issued (or not).

Keith

---

From: Carsten Bormann <[email-masked]>
Date: Mon, 22 Jul 2019 12:41:30 -0400

On Jul 22, 2019, at 12:23, Keith Moore <[email-masked]> wrote:
> I would not want to put that responsibility on a third-party filer, though.   Sometimes there are multiple patent applications, in one or more countries, covering a single invention.  Sometimes patent applications sit in various stages of approval for months or years before any patents are issued (or not).

The text in the RFC gets that right, both sides of the medal (the desire for reports to be useful vs. the desire for them to be there at all, if necessary through a third party).
That should be what guides the implementation.

Grüße, Carsten

---

From: Jari Arkko <[email-masked]>
Date: Mon, 22 Jul 2019 13:38:49 -0400

I agree with Brian and John, and about Brian’s interpretation of the current rules. And as Henrik points out, the rules evolve. I think a useful thing at this point would be adjust the current form a bit, by allowing some information to be left out. 

And of course, when information is available it would be useful for people to fill it in. Even for 3rd party submissions. However, in my experience it may not always be easy (e.g., multiple patent numbers and some information that’s available and some that’s not available in public sources).

Jari