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Update to OpenURL Patent Story

By kcoyle, Section Standards
Posted on Sat Jul 26th, 2003 at 04:02:07 PM EST
This is a recent update to the story of the story of the Openly patent on its OpenURL resolver.


Date: Fri, 25 Jul 2003 09:52:03 -0400
To: NISO voting members <info@openly.com>
From: Eric Hellman <eric@openly.com>
Subject: Open Letter to NISO members about Patents and OpenURL
Content-Type: text/plain; charset="us-ascii" ; format="flowed"
X-UIDL: f?'#!=O\!!Q&<"!YD8"!

Dear Fellow NISO Members,

In May, members of the NISO community became concerned that a 1999 patent application by Openly Informatics might have the unfortunate effect of discouraging implementation of the OpenURL draft standard currently in trial use. Openly Informatics fully supports this OpenURL standard, and we hope to see it implemented as widely and as openly as possible. When we learned of these concerns, we committed to work with NISO to address them and to make sure that adoption of the Draft Standard would proceed unimpeded. I want to report to you our progress on this effort.

To briefly sum up the background on this issue, in 1999 we applied for a patent on a specific identifier resolution technique we pioneered with our LinkBaton system. Our patent application cited prior work such as Herbert van de Sompel's SFX, the DOI system, and PubMed's LinkOut system. Starting in early 2000, we widely trumpeted the patent-pending status of LinkBaton. In 2001, I was asked to join NISO's committee AX, which was charged with developing syntax for a new OpenURL Standard. There are many different resolution techniques available for localized linking, and resolution methods for the OpenURL were explicitly excluded from the Committee's charge. I had specifically informed a number of people, including several Committee members and NISO's present Chair, about the patent-pending status of LinkBaton, and the Committee's charge indicated to me that the LinkBaton resolution technique would not be an issue. As the Standard has developed, Openly Informatics has been at the forefront of its development and implementation. In May of this year we were the first to deploy a NISO-OpenURL-1.0 compliant resolver, 1Cate (http://www.openly.com/1cate/). (1Cate does not currently use the LinkBaton resolution technology).

Around this time, concern arose that implementation of the OpenURL Standard could be impeded by legal concerns resulting from the broad language of the LinkBaton patent application. As technology developers supporting OpenURL, this was the last thing we wanted to see happen, because the market for our technology will grow along with the adoption of the Standard. On learning of this concern, we sought ways to ensure that the possibility of a patent would not interfere with implementation of the Standard. We have made clear our position that the OpenURL Draft Standard does not infringe in any way on the LinkBaton Technology.  We have granted access to our confidential patent filings to representatives of NISO. We have also offered to grant no-cost licenses for the LinkBaton Technology to NISO and its members for the purposes of implementing OpenURL. NISO has declined this offer. We have even offered to modify our patent claims to assuage any specific fears about the applicability of our patent to OpenURL link-server systems, even those offered by our competitors. NISO has not accepted this offer, and has not yet identified to us any specific concerns about enforcement of our potential patent. We continue to hope that we can work with NISO and with NISO members to promote the OpenURL Standard, and to eliminate any perception that a potential patent for LinkBaton would prevent implementation and adoption of the OpenURL Standard.

I have been asked why we continue to pursue a patent on the LinkBaton identifier resolution technique. It is important to note that property rights associated with a Patent can be used to enforce openness just as property rights created by Copyright law are used as the legal foundation for "Open Source" software licenses. We believe that a patent for LinkBaton will help us ensure that identifier resolution systems remain open, nondiscriminatory and based on cooperation between interested parties. Openly Informatics has shown by its past actions (see our work on S-Link-S, Jake, and UHF) that it is fully committed to open standards and open resolution architectures. We have no intention of changing that stance.

As part of our work related to this issue, we have become aware of several issued patents belonging to other companies that may be infringed upon by OpenURL resolution services. We are working to ensure that our OpenURL software and technology properly respect legitimate patent rights that have been granted under the laws of the United States.

I welcome your feedback regarding this issue, and I look forward to working with many of you on implementation of the OpenURL standard and the exciting opportunities it makes possible.

Eric Hellman
Openly Informatics, Inc.


Eric Hellman, President                            Openly Informatics, Inc.
eric@openly.com                                    2 Broad St., 2nd Floor
tel 1-973-509-7800 fax 1-734-468-6216              Bloomfield, NJ 07003
http://www.openly.com/1cate/      1 Click Access To Everything

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Update to OpenURL Patent Story | 3 comments (3 topical, 0 editorial, 0 pending) | Post A Comment
Reply/comments by NISO (none / 0) (#1)
by kcoyle on Tue Jul 29th, 2003 at 04:57:14 PM EST
(User Info) http://www.kcoyle.net

TO:  NISO Voting Members (Representatives and Alternates)
NISO Standards Development Committee
Members of NISO Standards Committee AX (OpenURL)
Chairpersons of NISO Standards Committees
FROM:  NISO Board of Directors:
Jan Peterson, Chairperson

DATE: July 29, 2003

RE: OpenURL/Patent matter

Dear Members,

The NISO Board is writing to share with you additional information related to NISO's response to the Openly Informatics patent application.  The intellectual property issues that the Openly Informatics application raises are important for NISO and its members to address.

The NISO Board of Directors learned of the Openly Informatics patent application to the U.S. Patent and Trademark Office (USPTO) informally through the World Intellectual Property Organization (WIPO) website in April.  If Mr. Eric Hellman, the President of Openly Informatics, talked to Board members in advance about the patent application, it was outside the formal context of NISO.  Since April, the NISO Board has been working diligently to understand the ramifications that the proposed patent, if granted, may have on the implementation of the OpenURL standard, which was developed to support of the open exchange of information.
On NISO's request Mr. Hellman allowed a committee of the Board of Directors to examine the complete patent application and all related documentation so NISO might gain a fuller understanding of the scope of the patent application.  On June 23 a committee of the Board examined those papers. This group viewed the documentation under a nondisclosure agreement that limited what they could disclose to the members of the Board.  Hellman's intent in filing the patent application was to protect the technology surrounding his LinkBaton application.  However, it was the committee's unanimous conclusion that if the patent issues there is a strong possibility that, with a broad interpretation of the patent claims, implementers of OpenURL resolvers will infringe on the patent.

Given this conclusion the NISO Board decided that NISO will submit a formal protest to the Openly Informatics patent application to the USPTO.  Through the protest NISO wants to make the Patent Examiner aware of prior art related to link resolvers to enable the Examiner to make a more informed decision on the Openly Informatics application.  The protest is now being prepared and will be filed by August 1. In accordance with USPTO requirements Mr. Hellman will receive a copy of the protest and will have an opportunity to respond.

The Board's interest in bringing NISO's concerns to the attention of the USPTO is to try to eliminate as much uncertainty as possible surrounding the implementation of the OpenURL standard. Filing a protest is the appropriate way to communicate these concerns.  

Throughout this period NISO and Mr. Hellman have been in regular communication. Mr. Hellman has been forthcoming and cooperative.  As Mr. Hellman reported in his message of July 25, he offered to modify the patent claims.  However, the Board concluded that this could not be achieved in the time available.

Mr. Hellman has indicated that he is prepared to grant a no-cost license should the Openly Informatics patent be approved. If the patent is granted this is an option we will act on.  However, it should be noted that even a free license places  responsibility on any implementer to gain and renew the license.  If Openly Informatics were to be acquired, would a new owner be as sensitive to the open access point of view that NISO and the OpenURL standard represent?
The Board believes that it is important for NISO to ensure that there are no encumbrances to the implementation of any NISO standard and to ensure that NISO's members and the communities NISO serves are able to implement NISO standards without liability.   This is one of NISO's core values as a standards developer. NISO is committed to doing all that is required to maintain NISO standards as open and fully accessible and to support a standards development program that is based on integrity and openness.

National Information Standards Organization (NISO)
4733 Bethesda Avenue, Suite 300
Bethesda, MD 20814 USA
T: 301-654-2512
Fax: 301-654-1721
url: http://www.niso.org

[ Reply to This ]

Buried (none / 0) (#3)
by Eric on Tue Jul 29th, 2003 at 09:19:33 PM EST
(User Info) http://www.openly.com/

My glossing for the NISO comments is buried here

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