Dear all, below please find a comment from our legal department. Best regards, K. Schattauer Dear Luis, dear all, Alcatel Lucent can agree to the proposal of Nokia Siemens with the modifications (highlighted in yellow) made in the attachment. The modifications have been made to accommodate our main concern, which is the following: We agree to grant royalty-free rights on copyrights in the specifications to any third party, so no objection to the publication of the specification on royalty-free terms. However, we think it is not appropriate to undertake to grant royalty free rights to any third party on our patents (not limited to background, sideground or foreground patents), any third party here could also include a party, which even is not a participant of an FP7 project. There is no obligation of such third party to grant reciprocal rights which may result in a situation where Alcatel Lucent or any of the other partners are granting royalty free rights to a third party and such third party in return requests royalties for the use of its patents. Further the way we understand the terms of the collaboration agreement on the future internet, such collaboration agreement does also not include the obligation to agree to an undertaking to license any of the patents to any third party on royalty-free terms. Further please insert in Annex 3 the following text: Alcatel Lucent Deutschland AG and Alcatel Lucent Italia exclude all Background and Sideground not owned by them as well as any Background and sideground which it has not itself introduced into the Project at its sole discretion for use in execution of the Project. Eva Bender Senior IP Corporate Counsel Intellectual Property & Standards phone: +49 711 821 45300 mobile:+49 170 6376510 eva.bender at alcatel-lucent.com <mailto:eva.bender at alcatel-lucent.com> Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Dienstag, 16. August 2011 18:11 An: ext LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesoría Jurídica Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Hello Luis (and representatives of INRIA and Technicolor - see 4. below), Please find attached some suggestions and additions for the new clause. It also takes up Fraunhofer's concern on overruling the exclusion list which is a valid point. 1. Essentially, the changes cover two points: from the mere language, it sounded as if the license covered the copying, modification and distribution of the Generic Enabler Specifications when making the implementation, but not the implementation as such. If this is the purpose, then "Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications" must be changed to "Parties may develop and release implementations of the FI-WARE Generic Enabler Specifications". 2. Secondly we suggest some more clarifying language on the exclusion of IPRs - the concepts should be familiar from standardization. 3. I am not sure, whether "which are not inherent to, or cannot trivially be derived as valid implementation" is the same as the intended target described as "nobody would implement it in a different way. / aspect of the implantation that everybody ... would obviously do. " But we can accept the language. 4. Last, regarding the exclusion list: INRIA's exclusions are unclear in the following regard: (i) all its Sideground; and (iv) any and all Background and Sideground that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background and Sideground INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." Is all Sideground excluded or only the Sideground which is introduced for use or which INRIA is free to grant Access Rights? Technicolor: "Any and all Background and Sideground not Needed for the execution of the Project" must either be deleted or amended by "or not Needed for Use of Foreground" in order to be in line with the text of the main agreement. Otherwise, the text is ok for Nokia Siemens Networks Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Straße 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ <http://www.nokiasiemensnetworks.com/global/> Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: München / Registered office: Munich Registergericht: München / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Persönlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Geschäftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: München / Registered office: Munich Registergericht: München / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext LUIS GARCIA GARCIA Sent: Friday, August 12, 2011 10:23 AM To: fiware-legal at lists.fi-ware.eu Cc: Asesoría Jurídica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we´ve done some modifications in clause 4.1. in order to protect parties´s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner´s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we´ve seen that there may be a misinterpretation in the first paragraph, and we´ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I´ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there´s no room for further negotiations. We´ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we´ve only received 9 of 26 Form A signed. If we do not received the Form A we´re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We´ve included the contact and signature information we´ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I´ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you´d need any further information. Best regards Luis García García Asesoria Jurídica // Legal Department Tfnos: +34 914832614 // +34913129666 Telefónica Investigación y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5ª planta Ronda de la Comunicación s/n 28050-Madrid (España) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra política de envío y recepción de correo electrónico en el enlace situado más abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: <https://lists.fiware.org/private/fiware-legal/attachments/20110817/90662916/attachment.html> -------------- next part -------------- A non-text attachment was scrubbed... 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