The following was conveyed via email on September 9, 1999 by Clarke Wixon Patent Attorney, Xerox Mr. Stephen Coya Executive Director Internet Engineering Task Force c/o Corporation for National Research Initiatives 1895 Preston White Drive, Suite 100 Reston, Virginia 20191-5434 Re: IETF RFC 2301 (TIFF-FX) IPR Statement Dear Mr. Coya: Xerox is currently aware of two U.S. Patents which may relate to implementations of the IETF RFC 2301 (TIFF-FX) standard. U.S. Patent No. Re35,657 is owned by Xerox Corporation. U.S. Patent No. 5,778,092 is owned by ScanSoft, Inc., but Xerox has rights to sublicense the technology for these purposes. To the extent that Xerox's existing intellectual property rights under the above two patents may cover the implementation of a product compliant with the TIFF-FX standard, Xerox agrees to provide, upon request, a royalty-free, world-wide, non-exclusive license under certain claims of the above two patents (not including the segmentation technology described in the specification and set forth in claims 2-4, 7, 8, or 12-14 of U.S. Patent No. 5,778,092, which is not considered to be an essential technology for the implementation of the TIFF-FX standard) for the purpose of making, having made, using, selling, offering for sale, or otherwise disposing of a product implementing the TIFF-FX standard, and only to the limited extent necessary for the product to comply with the TIFF-FX standard. Any license granted by Xerox under this Statement shall be subject to the following condition: any party receiving such a grant from Xerox must agree to grant Xerox Corporation, Xerox Ltd., Fuji Xerox Co. Ltd., Modi Xerox Limited and any corporation, firm, partnership, individual, or other form of business organization at least forty percent (40%) owned or controlled, directly or indirectly, by Xerox Corporation, Xerox Ltd., Fuji Xerox Ltd. or Modi Xerox Limited, upon request, a license under that party's patents relating to the TIFF-FX standard, on terms and conditions no less favorable than those granted by Xerox to that party. Parties interested in obtaining a license may contact: Xerox Intellectual Property Operations (XIPO) ATTN: MRC License Inquiries 100 Willowbrook Office Park, Bldg. 832-01A Fairport, New York 14450 U.S.A. Very truly yours, /s/ Dr. Jan Jaferian Vice President c: James Rafferty (IFax WG Chair) Keith Moore (IETF Area Director) Patrik Faltstrom (IETF Area Director) Clarke Wixon Patent Attorney Xerox Corporation