[cabfpub] Report of the Patent Advisory Group

Ben Wilson ben.wilson at digicert.com
Tue Oct 6 07:16:00 UTC 2015

Patent Advisory Group Report to the CA/Browser Forum

To:       CA-Browser Forum Members

From:   CABF Patent Advisory Group

Re:      Report on PAG Discussions

This memo reports on CABF Patent Advisory Group’s (PAG) discussions. The
PAG was stimulated by consideration of how the Intellectual Property Rights
Policy ( <https://cabforum.org/wp-content/uploads/IPR_Policy_V1.pdf>
https://cabforum.org/wp-content/uploads/IPR_Policy_V1.pdf) would apply to BR
§, revision of which is under consideration. The PAG seeks feedback
to guide its further work.

The Forum’s IPR Policy generally requires royalty-free licensing of a
Member’s “Essential Claims”. The term “Essential Claims” is defined as

8.1. Essential Claims

"Essential Claims" shall mean all claims in any patent or patent application
in any jurisdiction in the world that would necessarily be infringed by
implementation of the Final Guideline or Final Maintenance Guideline. A
claim is necessarily infringed hereunder only when it is not possible to
avoid infringing it because there is no non-infringing alternative for
implementing the Normative Requirements of the Final Guideline or Final
Maintenance Guideline. Existence of a non-infringing alternative shall be
judged based on the state of the art at the time the guideline is adopted as
a Final Guideline or Final Maintenance Guideline. For avoidance of doubt, if
all the alternatives for performing a particular function or action would
infringe claims of a patent or patent application, then all claims which
cover such alternatives would be Essential Claims.

The PAG discussed the application of this definition to, which
includes a list of alternative methods, and noted that (except for the case
in the last sentence of the definition) a patent claim on one of the
alternatives would not be an Essential Claim.

For this reason, the PAG circulated (on 9/18/2015) a request that Members
disclose patents as if Essential Claim included alternatives (

Dear Forum Member,

The Patent Advisory Group has approved the following Notice of Requested
Disclosure re: BR § for distribution to CA/Browser Forum

The CA/Browser Forum Intellectual Property Rights Policy includes the

“2. Licensing and Disclosure Goals for CAB Forum Guidelines: In order to
promote the widest adoption of CAB Forum Guidelines, CAB Forum seeks to
issue Guidelines that can be implemented on a Royalty-Free (RF) basis
subject to the conditions of this policy. CAB Forum will ordinarily not
approve a Guideline if it is aware that Essential Claims exist which are not
available on RF terms. CAB Forum Members are encouraged to bring to the
attention of the CAB Forum any known patent or pending patent application of
other organizations that might contain Essential Claims.”

In light of that goal, to better evaluate whether the list of alternative
methods for performing domain-control validation in BR § is
adequate, in light of the Forum’s IPR Policy, and to provide guidance to
those who will look to the Forum’s guidelines while seeking to comply on a
royalty-free basis:

(1)   All CAB Forum Members should disclose any patent or patent application
that the Member or its Affiliates owns and any that it or its Affiliates has
the right to license without obligation of payment or other consideration to
an unrelated third party that would contain Essential Claims with respect to
any existing or proposed method for domain validation currently listed in or
proposed for BR §, if such method were the only way to fulfill the
BR § requirement.

(2)   In so disclosing, it is also requested that the Member also identify
to which of the methods in the existing or proposed BR § the
patent(s) would have Essential Claims.

(3)   Please respond on or before October 31, 2015.

In other words, the Forum is asking that Members disclose any patent or
patent application that contains a method of domain validation.  The PAG is
concerned about the number of royalty-free methods available.  The existing
and proposed methods for BR § are set forth in an email to the
Public list from Kirk Hall, dated 10-Sept-2015 with a subject line of
“[cabfpub] Final Domain Validation Methods pre-ballot for Forum

Finally, the PAG will soon be circulating its summary of findings.  Those
findings are in line with this Request and include two major
recommendations: (1) modification of the definition of “Essential Claim”
and (2) greater specificity with patent claim disclosures.   The findings
will be discussed in further detail at the upcoming face-to-face meeting in

Thank you,

CA/Browser Forum Patent Advisory Group

It was also noted that, when a patent is disclosed in order to be excluded
from the licensing requirement, it is not generally required (except as an
option for unpublished applications) for the patent owner to identify the
relevant portion of the Forum document:

4.3 Conditions and Procedure for Excluding Patents and/or Patent
Applications From CAB Forum RF License.

A Participant seeking to exclude Essential Claims from the CAB Forum RF
License in accordance with Section 4.2 must provide written notice of such
intent to the CAB Forum Chair (“Exclusion Notice”) within the Review
Period and the Exclusion Notice shall be effective upon its receipt by the
CAB Forum Chair. The Exclusion Notice for issued patents and published
applications shall include the patent number(s) or title and application
number(s), as the case may be, for each of the issued patent(s) or pending
patent application(s) that a Participant reasonably believes at the time may
contain Essential Claims the Participant wishes to exclude from the CAB
Forum RF License. If an issued patent or pending patent application that may
contain Essential Claims is not set forth in the Exclusion Notice, such
Essential Claims shall continue to be subject to the CAB Forum RF License.
The Exclusion Notice for unpublished patent applications must provide
either: (i) the text of the filed application; or (ii) identification of the
specific part(s) of the Final Guideline or Final Maintenance Guideline whose
implementation makes the excluded claim an Essential Claim. If (ii) is
chosen, the effect of the exclusion will be limited to the identified
part(s) of the Final Guideline or Final Maintenance Guideline. Exclusion
Notices shall be published at [URL:

Actions to consider:

●       Making patent disclosure relating to alternatives (as recently
requested concerning a requirement of the IPR Policy.

●       Changing the definition of Essential Claims such that a claim on
one of a set of alternatives would be an Essential Claim. This would require
disclosure of a patent that the owner wished to exclude from the licensing

●       Changing the IPR Policy’s requirements for excluding patents such
as to require identification of the relevant portion of the Forum document.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://lists.cabforum.org/pipermail/public/attachments/20151006/0044c7e1/attachment-0002.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4954 bytes
Desc: not available
URL: <http://lists.cabforum.org/pipermail/public/attachments/20151006/0044c7e1/attachment.p7s>

More information about the Public mailing list