Research Non-Assertion Pledge Drafter's Notes

Drafter's Comments

Estoppel

Some commentators suggested that the estoppel theory that we rely upon for this pledge has uncertain enforceability. Particularly, in some countries, estoppel requires for there to be some pre-existing relationship between the parties. Due to this uncertainty, it was recommended that the Research Non-Assertion Pledge be implemented in a form that requires some form of execution or signature process (or registration). While this is a possible implementation of the Non-Assertion Pledge, I do not think it is necessary to implement a signature process. In particular, it follows the model established by the IBM Non-Assertion Against Open Software, the Eco-Patent Commons, and the Microsoft Open Specification Promise, all of which rely on estoppel.

Definition of Non-Profit Institution

An earlier draft included government agencies as a qualified non-profit institution, but this was removed due to the failure among our commentators to agree on the appropriateness of including government entities, other than educational institutions (educational institutions are already included as one of the categories).

It was pointed out that the definition of a Non-Profit Institution under sub-clause (ii) is a U.S.-centric definition, and alternative definitions of other countries, or under other countries' laws were suggested. However, because an exhaustive list of such statutes is impracticable, sub-clause (iii) should be interpreted as being a catch all provision for non-profit entities in other jurisdictions.

Exclusive Licenses and Conflicting Transfers

IMPORTANT!!

It was pointed out by some commentators that a conflict could exist between an exclusive licensee and the beneficiary of the non-assertion. In some jurisdictions, for example, an exclusive licensee has the right to bring an infringement suit independently of the patent owner. Therefore, if the patent owner has already granted an exclusive license, then a beneficiary of the non-assertion may nevertheless face the possibility of suit from an exclusive licensee. It was recommended that we add a warranty that the patent owner has granted no exclusive licenses to the pledge patents. This, I decided not to do, due to the risks to the licensor in making that warranty. However, I strongly urge patent owners who are making the pledge to identify and specifically remove any patents that have been licensed exclusively from the non-assertion pledge to prevent such a conflict.

Subsequent Ownership Transfers

Some commentators pointed out that the Pledge may not be binding upon a subsequent assignee of the patent rights (such as a company that acquires the patent owner's assets), because it is not well-established whether the unilateral promise on which the Pledge is based would be binding upon the assignee. This could depend on the details of the transaction (e.g., whether it's an asset purchase or merger), whether the assignee has promised to honor the commitments of the assignor, and the legal doctrine applicable in a specific jurisdiction. It was suggested that I add a clause to the Non-Assertion Pledge that would either (a) require the patent owner to condition any sale or assignment of the patent rights on the continuing validity of the Pledge, or (b) recite within the Pledge itself that it is binding upon future purchasers of the patent rights. I declined to do this due to the risk pointed out by some commentators that such a clause might complicate or jeopardize future mergers & acquisitions involving the grantor. However, whenever possible, grantors are strongly encouraged to ensure that any future transfers of the patent rights are done subject to the Pledge.