Microsoft Won't Assert Web Services Patents

Andy Updegrove writes, "Microsoft has just posted the text of a new promise not to assert its patents with respect to 35 listed Web Services standards. The promise is similar to the covenant not to assert patents that it issued last year with respect to its Office 2003 XML Reference Schema, with two important improvements intended to make it more clearly compatible with open source licensing. Those changes are to add an explicit promise not to assert any relevant patents against anyone in the distribution chain of a product, from the original vendor through to the end user; and to clarify that the promise covers a partial as well as a full implementation of a standard. It's all part of a recent wave of such pledges made by companies such as IBM, Nokia, and Oracle, and a significant shift in how Microsoft is dealing with open standards."

Lets be sure to praise em for doing good

[jmorris42 (1458)]

Can't see any downside to them making such a pledge, so lets all be sure to be unreserved in our praise. Who knows, maybe we can encourage more of the same sort of behaviour. And not only just from Microsoft, lots of patents out there held by lots of companies, many of them potential mortal threat.

Yea Microsoft!

See, my tongue didn't burst into flames or anything. :)

Re:

[Em Adespoton (792954)]

I'm curious though... what do these pledges actually mean? Are they legally binding? Can they be rescinded at some point in the future? If these pledges really mean that the patents are unenforcable until they expire, I'm all for it... but given MS's history, I want to be absolutely certain on this before doing anything that messes with these now well-known patents (can't claim ignorance).

Re:

[pthisis (27352)]

I'm curious though... what do these pledges actually mean? Are they legally binding?

In particular, anyone have any idea to what degree does this constitute an estoppel against future patent litigation against web services implementations?

http://en.wikipedia.org/wiki/Estoppel [wikipedia.org]

Re:

[DragonWriter (970822)]

The question of whether it raises an estoppel (presumably, here, a promissory estoppel) depends on, among other things, the degree to which the reliance by the unlicensed user of the patent on the pledge to not enforce the patent is "reasonable", as well as consideration of whether injustice can be avoided by any other means than enforcing the promise.

Re:Lets be sure to praise em for doing good

[TekPolitik (147802)]

The question of whether it raises an estoppel (presumably, here, a promissory estoppel) depends on, among other things, the degree to which the reliance by the unlicensed user of the patent on the pledge to not enforce the patent is "reasonable", as well as consideration of whether injustice can be avoided by any other means than enforcing the promise.

As a statement of the law this is spot on, but it would have been more helpful to the person asking the question if you had applied it to a sample set of facts.

Note the requirement for reliance - this means you must at least have been aware of the promise. You (or at a minimum somebody you claim through) must have then acted, in reliance on the promise, in such a way that you would suffer a detriment if Microsoft resiled from the promise.

If, being aware of the promise, you produce any non-trivial amount of work depending on the patents, chances are that a court is going to be willing to impose a promissory estoppel. In the case of GPL software, somebody, somewhere is going to rely on this promise, and a consequence of this is there will be GPL software out there that effectively gives you something that should support an estoppel. It's going to be very difficult, if not impossible, for Microsoft to renege on this.

It is fairly safe* to take them at their word here.

* - usual disclaimers apply.

Re:

[TekPolitik (147802)]

In the case of GPL software, somebody, somewhere is going to rely on this promise, and a consequence of this is there will be GPL software out there that effectively gives you something that should support an estoppel.

Having just read the text of the Microsoft promise, there is an argument (although not a strong one) that this may not be the case, however if that argument is successful, it would involve claiming that the promise as made is a contractual offer and so reliance on the promise while complyin

Re:Lets be sure to praise em for doing good

[Kesch (943326)]

Microsoft irrevocably promises not to assert...

It does appear to be legally binding by the tone of the analysis in the TFA.

You pretty much automatically have been granted a license to the listed patents and the only term of use is that you lose the protection if you try to file a patent infringement lawsuit against Microsoft concerning the standard.

Re:

[Zeinfeld (263942)]

The 'promise' of a license made in the context of a standards process is almost certain to be considered binding. The standard is agreed on the basis of the promise. The problem that people have been facing is that the traditional IETF reciprocal licensing terms have turned out to be almost certainly unenforceable when they allow for a sublicensing term as people looked at the SCO case. Even if they are enforceable in theory they are not an effective way to pre-empt a case. A lot of time was spent in rath

Re:

[moochfish (822730)]

Anybody up for some hardcore skiing? I hear there's record snowfall in Hell right now!

So, why?

[McFortner (881162)]

So, can somebody tell me why you would have a patent if you are not going to enforce it?

"Pay no attention to the Patent Lawyers behind the curtains...."

Re:

[CaymanIslandCarpedie (868408)]

Because if you don't have the patent, someone else will get it and enforce it on you.

Re:

[LaughingCoder (914424)]

So, can somebody tell me why you would have a patent if you are not going to enforce it?

Easy. So somebody else doesn't patent it and prevent you from using it, or extort licensing fees from you.

Re:

[RockyMountain (12635)]

So, can somebody tell me why you would have a patent if you are not going to enforce it?

One reason is to preempt anybody else from patenting the same idea.

Of course, you could do the same thing by just publishing the idea. But filing a patent buys you time. Publish the data without patenting it, and anyone can use it right away. Patent it, and keep your options open -- you can always decide to open up royalty-free licencing later.

(I'm not suggesting this is MS's reason. Just giving an example of one rea

Protection

[EmbeddedJanitor (597831)]

Sometimes you patent something to prevent someone patenting the same, or similar, thing later and gouging you for it.

Also, if there is similar prior art, then getting a patent shows that yours is sufficiently different to not infringe.

Re:

[Zeinfeld (263942)]

So, can somebody tell me why you would have a patent if you are not going to enforce it?

To stop some bastard from reading the spec and patenting it.

This has happened to me a very large number of times. I am told there are roughly 100 US patents on work I have done filed by other people after the work was published.

So now I patent ideas aggresively as the only way to keep them open.

I do not worship at the shrine of RMS. I do not beleive that software patents are always a bad thing. The RSA and Diffie

Why not a license

[rsilvergun (571051)]

instead of a pledge. A pledge is all nice and pretty, but a good 'ole legally binding license would be even better, and would remove any doubts (since it wouldn't matter what MS decided to do later on).

Re:

[Rik van Riel (4968)]

A pledge is a lot nicer, since a license would need to be signed and returned by every recipient of software covered by the specifications.

This, in turn, creates issues where somebody who distributes free software cannot automatically pass the license on to the people dowloading the software.

A universal pledge, that covers everybody, is a lot more practical.

Microsoft HAD to do this

[Audent (35893)]

because its patent (on XML in this instance) was soundly thrashed about and it had to re-word it thus reducing its impact.

Story on it here: http://computerworld.co.nz/news.nsf/UNID/E6D44C460 0041E39CC2571D4007DF1C8 [computerworld.co.nz]

snip
The patent will no longer cover the XML file formats that Microsoft is using and therefore anyone is free to interoperate with Microsoft file formats without fear of patent litigation from this particular patent
snip

The prior art around AbiWord's handling of XML basically did for the original patent Microsoft was after. The new one doesn't really have the same issues for the industry at large.

Dialog

[eldavojohn (898314)]

Act One

Setting: 1990s

Developer: "Man, java is the shit!" (hey, it was the 90s, everybody spoke like an idiot)

Microsoft: "Then you'll love J++, it's more efficient and other stuff that we don't need to prove. Plus, it will soon be used by everyone everywhere."

Developer: "Cool, sport me a copy!"

Microsoft: "Not so fast, it's $300 a personal license."

Developer: "No thanks."

(Scene ends)

Act Two

Setting: late 1990s

Developer: "JSP's are stupid awesome."

Microsoft: "Then you'll love ASPs, they're more efficient and other stuff that we don't need to prove. Plus, it will soon be used by everyone everywhere."

Developer: "Cool, where do I get the compiler for VB or this .NET stuff?"

Microsoft: "Well, you can make ASPs for free and stuff and almost everyone has IIS anyways ... but to make applications that do anything at all you need our libraries. You need to buy Visual Studio and we're afraid it's a bit pricey ..."

Developer: "No thanks."

(Scene ends)

Act Three

Setting: the oughts

Developer: "XML makes my life easier but it's not standardized."

Microsoft: "Use our standard, it's the best! Uh, it's kind of sorta free. You can edit it easy and use it. *cough* but we've got some patents *cough* so go ahead and use it."

Developer: "Wait, what was that last part?"

Microsoft: "Aw, christ, well, to stop everyone from slowly eating away at our dominant market, go ahead and use it. We promise not to sue but no backsies on these patents!"

Developer: "What the fsck, Microsoft, get it through your heads, we just want to get along. Stop charging us for everything (even standards). Change your business model."

(Scene ends, developer storms off to go play nice with the Sun & the rest of the world)

Re:

[CCFreak2K (930973)]

...go play nice with the Sun...

Sometimes I think the only reason Sun Solaris is open is because they'd be dead if not. I also think the only reason OpenOffice is open is because Microsoft Office isn't.

Re:

[DragonWriter (970822)]

It's been free for ages.

The Visual Studio Express editions have been free since mid-2005, originally as a limited free-for-1-year program, that was extended to be free forever in April of this year.

I've heard of "internet time", but calling that "for ages" just seems, well, a bit odd, even so.

Heres a thought

[by Anonymous Coward]

Maybe they should sign them over to a 3rd party such as the FSF instead of making nonbinding promises.

Sweet

[PhotoGuy (189467)]

Nice. A bit of assurance from a voice I trust. I can sleep well now. Good night.

Breakable Pledges

[Doc Ruby (173196)]

What legal binding do these "pledges" have? Why not back up the pledges by just releasing the patent into the public domain?

Re:

[by Anonymous Coward]

When you give your word and publish it in durable form, that's pretty much binding. It's not a contract (which requires explicit mutual agreement and thus EULAs don't contain the word "contract"), but it hardly constitutes tresspass when you put out the welcome sign. They could conceivably revoke future uses of the patent at some arbitrary point, but it'd be a pretty hard sell to a judge, let alone a jury to sue anyone over it.

Re:

[Prof.Phreak (584152)]

What legal binding do these "pledges" have?

None. Not only that, but if these patends ever end up in non-Microsoft's hands (it -could- happen; say in 10 years), then that party won't even care that Microsoft has promised not to fight.

Good, positive attitude

[mangu (126918)]

Microsoft's position is that of someone in a warehouse full of gasoline cans. Let's not start throwing lighted matches around.

It's a positive step, because it shows they can act rationally, having had their share of trouble from software patents. It also goes to show that, if software patents are bad for Microsoft, they should be considered generally as a Bad Thing for the software business in general.

There is a general attitude in Washington, sponsored by the ??AA, that any law that creates more "intellectual property" is good for business. Microsoft is sending a message that it ain't necessarily so.

Competitors

[RAMMS+EIN (578166)]

Of course, they said nothing about using the patents against their competitors or vendors or users of competitor's products. So what have we gained? They won't sue you, as long as you use or distribute _their_ products. Well, thank you very much. The chilling effect of software patents on the industry is still as strong as ever.

SO

[JustNiz (692889)]

if they're not intending to use them, why did the get them in the first place? Its like someone pointing a gun at your head but saying "I won't pull the triger, honest".

Re:

[by Anonymous Coward]

The banner is not red.

You have the killer eye fungus.

You are bleeding into your eye.

Soon it will eat your brain.

Re:

[McFortner (881162)]

Itsatrap

Get an axe!

Re:

[Andy Updegrove (956488)]

Its not really that surprising, because almost all Web Services standards were proposed by strange-bedfellows Microsoft, IBM and BEA, so Microsoft wants these standards to be broadly adopted. That said, it's still good news that they're making them easier to implement if you think that Web Services are a good thing. It also helps promote the non-assertion concept, and encourages others to use the same device. Net net, good news, IMHO. - Andy

Re:motivation behind this?

[rifftide (679288)]

Historically, Microsoft has not been a big proponent of winning through patents, either by preventing competition or extorting usage fees. They like to win in other ways. The big software houses see Web Services as the key towards the next great era of business software, and they all like their chances. But that only happens if they can avoid getting stuck in a mire of standards dueling and IP litigation (see: Blu-Ray/HD DVD).

Notice that the pledge includes the standard defensive measure - if you sue Microsoft for infringing one of your patents, it's void. But it was carefully crafted so that only Microsoft code used to directly implement one of the specifications is covered by the defensive clause - not all of Windows and MS Office for example. That's perhaps the most impressive part of the pledge.

Why not?

[VanessaE (970834)]

Why keep the patents if you're not going to use them? It's just blatent patent hogging.

As much as software patents may be a horrible idea, and as much as people here generally hate Microsoft, maybe this is a *good* step? The company has pledged publicly that they won't actually assert their patent rights... and since these are patents we're talking about, it means that noone else can either.

Maybe it's just the sort of protection that the open source movement needs so that we *can* innovate without having to jump through a bunch of hoops or worry about facing legal action?

Re:

[DragonWriter (970822)]

As much as software patents may be a horrible idea, and as much as people here generally hate Microsoft, maybe this is a *good* step? The company has pledged publicly that they won't actually assert their patent rights... and since these are patents we're talking about, it means that noone else can either.

The problem with such a pledge is that, as its not a contract, or even a license, its dubiously enforceable. If they wanted people to be reasonably free to use the patent, they could make an offer of a

Re:

[Jerf (17166)]

Unless this pledge is legally binding, I personally don't find it very reassuring.

I can not categorically tell you it is; IANAL and I only follow patent and IP law for fun.

But there is a doctrine of laches [wikipedia.org], which has been applied to patents before. The basic idea is that the person bringing the suit deliberately held the suit until the moment of maximum damage, rather than bring it when the grounds for the suit was discovered.

It has been successfully used as a defense against submarine patents, where the pa

Re:

[DragonWriter (970822)]

The doctrine of laches is only applicable to delay, a promise not to enforce would not raise an issue of laches, though it might raise an issue of promissory estoppel, which might be a bar to enforcement in some cases, and in others the promise might simply limit the available remedies.

Re:

[Excelsior (164338)]

It's not patent hogging. Companies today have to apply for patents, even when they don't plan to enforce them, for purely defensive reasons. If you don't apply for the patent first, someone else will come knocking at your door who did.

The thing about this article that I don't understand is that the part about it being "a significant shift in how Microsoft is dealing with open standards." (emphasis mine) AFAIK, Microsoft has never sued anyone for patent infringement, and has an unwritten policy against it

Re:

[DragonWriter (970822)]

Furthermore, IIRC, patents come with an affirmative duty to enforce the patent; failure to do so can lead to loss of the patent. So a pledge not to "assert" (i.e., enforce) the patent (contrary to, say, an open public conditional offer of a free license to use the patent) might well jeopardize the patent itself.

Re:

[DragonWriter (970822)]

I know its true of trademarks, but I wasn't thinking of them. I'm pretty sure its true of patents as well.

Re:

[nuzak (959558)]

You seem to know your stuff, judging from your other posts on this thread ... but the only affirmative duty I can find with respect to patents has to do with prior art searches and "due care" to not infringe other patents when one has "notice" of a patent.

Not enforcing a specific case of infringement might entitle the defendant to equitable relief (laches), and I'm also fairly sure there's a duty to mitigate damages before seeking relief (not sure what that's called, now you really know IANAL). But I coul

Re:

[TekPolitik (147802)]

I know its true of trademarks, but I wasn't thinking of them. I'm pretty sure its true of patents as well.

It is not, although in the right circumstances, laches might apply (references can be found in other comments to this story).

Protection against patent suits

[I'm Don Giovanni (598558)]

A good reason to patent something you "invented", even if you have no intention of enforcing them yourself, is to prevent some small company that does nothing *but* patent from patenting your "invention" and coming after you. Even if you had "prior art", the case costs money to actually win, so you might feel compelled to settle to make it go away.

Microsoft normally doesn't sue over patents, but they're the biggest target for these patent-specialist companies (since MS has the most money, and potential sue

The Monetary Value?

[eldavojohn (898314)]

I think a lot of companies (like the companies mentioned in this article) obtain patents but don't hire patent trolls to go about flexing their lawsuit muscles.

What's the point of the patent? Well, especially on standards, you get to maintain complete creative control over the direction of the standard and it's kind of a safety to always make sure everyone depends on you.

I also think that companies might consider patents as an asset when they calculate their balance sheets. I have nothing to bac

Re:Reminds me...

[Archangel Michael (180766)]

I read your post as

Billy: Come over here.
Me: No! You'll hit me!
Billy: No I won't.
Me: Yes you will.
Billy: No I won't, I promise.
Me: Uh, okay.
Billy: (PUNCH!) Sucker!

Re:

[rewt66 (738525)]

Two words: promissory estoppel.

IANAL. I'm not even sure I spelled either word right. But the thing is, legally, if you make a promise, and I act on that promise, you can't turn around and sue me for acting on your promise.

OK, it's a bit muddier than that. You can still sue me. Anybody can pretty much sue anybody for anything. But you can't win the lawsuit, and losing can be painful enough that most people don't play such games.

It's actually even muddier than that. You can't win the lawsuit, unless th

Re:

[DragonWriter (970822)]

IANAL. I'm not even sure I spelled either word right. But the thing is, legally, if you make a promise, and I act on that promise, you can't turn around and sue me for acting on your promise.

OK, it's a bit muddier than that. You can still sue me. Anybody can pretty much sue anybody for anything. But you can't win the lawsuit, and losing can be painful enough that most people don't play such games.

Its actually quite a bit muddier than that. Under the doctrine of promissory estoppel, the promise is only enfor

Re:

[TekPolitik (147802)]

the promise is only enforceable where reliance on it is reasonable

I'm trying to think of circumstances where reliance on a promise would be found to be unreasonable. Do you have a case that shows this? I suspect that if reliance was unreasonable then it wasn't a real promise in the first place, such as when the person has "promised" something over which they have no control or has used the word in circumstances where it should not be expected to be taken seriously (such as in a campaign for political off

Re:

[RevMike (632002)]

Two words: promissory estoppel.

Actually, two different words: Unilateral Contract.

Microsoft is entering into an enforceable contract. This isn't grey area. Anyone who accepts this offer by building an application that utilizes the patented technology is untouchable. This is well established law.

Re:A promise is as good as gold

[Russ Nelson (33911)]

Uhhhh, actually, there is a legal doctrine called "reliance". If somebody says "I won't do this even though the law lets me", and you rely on their promise, then they have very little chance of successfully doing it. The judge will throw their case out of court so fast it will go into orbit.