Developers warned over OOXML patent risk

news analysis Academics say developers should be cautious following confusion over which parts of the OOXML specification are covered by Microsoft's "covenant not to sue".

news analysis Academics say developers should be cautious following confusion over which parts of the OOXML specification are covered by Microsoft's "covenant not to sue".

Developers wishing to use Microsoft's Office Open XML specification may need to brush up on their legal skills.

Academics studying Microsoft's efforts to promote its Office Open XML (OOXML) specification as an ISO standard have called on the software giant to clarify the language it uses in its licensing specifications, in order to make them easier for the technology community to understand.

OOXML, under consideration to become an ISO standard at a ballot resolution meeting later this month, can only be considered as a standard if offered on reasonable and non-discriminatory (RAND) terms.

To meet this criterion, Microsoft has made the 6,000-page specification freely available. But, further to this, Microsoft first released the standard under a "covenant not to sue", which has since been updated into a document called the Open Specification Promise (OSP).

The OSP is essentially a form of license agreement designed to give software developers peace of mind that Microsoft won't come after them in patent-infringement or other intellectual-property litigation upon using the specification.

While Microsoft's intentions seem clear on the surface (a "covenant not to sue" is as indicative of the company's plans as any phrase), academics and legal experts have pointed out that the ambiguous legal jargon within both the covenant and OSP gives little peace of mind to the average developer.

Ronald Yu, a U.S. patent agent and academic, said that smaller developers should have concerns about some terms used in the OSP.

Although terminology such as "required portion" is understood in the specialist patent and intellectual-property law community, Yu questioned whether even the most technically well-informed and legally-sophisticated developer would be able determine exactly which elements referred to within the 6,000 pages of the specification are affected by patents that aren't covered under the OSP.

If this coverage is not explicitly defined, Yu asked, how can an organization be sure Microsoft won't still be entitled to sue it?

The covenant, Yu warned, has never been tested in court with regards to intellectual-property rights, and it includes no mention of any forum--the court or tribunal and country--in which to resolve a dispute. It's not a release, Yu stressed, nor is it a contract, and, therefore, it needs to be treated with some caution.

David Vaile, executive director of the Cyberspace Law and Policy Center at the University of New South Wales, said that Microsoft participants at a recent symposium on the issue found it challenging to explain how an ordinary person "or even an ordinary lawyer" could easily determine which parts of the specification were covered.

"This lack of certainty would mean a cautious lawyer may be reluctant to advise any third party to rely on the promise without extensive and potentially quite expensive analysis, and even that could be inconclusive," Vaile said. "In turn, this could restrict its viability as a usable standard for less well-resourced users, including small developers and many public organizations."

Steve Mutkoski, regional director of interoperability at Microsoft and one of the lawyers on the team that drafted the licensing terms, described the OSP as an "innovation" that enables a company like Microsoft to gain a quick and broad adoption of a technology without needing to negotiate 20- and 30-page agreements with every party that wants to use it.

Mutkoski said the FAQs on Microsoft's OSP Web page provide adequate clarification as to what the terms mean.

Further, Mutkoski claimed that Microsoft inherited or adapted the legal jargon in the OSP from similar pledges offered by Sun, IBM and Adobe. If the terms are a problem, he said, it's not a problem limited to the legal team at Microsoft, but one that affects the wider industry.

But Vaile, while acknowledging the heritage of the terms, argued that the "everybody else is doing it, so why can't we" explanation isn't, ultimately, a very helpful one for users.

"Just because other lawyers do it, it doesn't necessarily mean they are things that people should be willing to accept," Vaile said.

"The ultimate goal is to reduce litigation, litigation risk, and legal complexity and expense. It is a higher goal to move beyond language that specialist high-end lawyers at major business partners are comfortable with to language which technical users or ordinary lawyers are also comfortable with in practical applications," Vaile said.

Vaile acknowledged that the Microsoft approach in the OSP is similar, although not identical, to other approaches employed by IBM and, to a lesser extent, Adobe and Sun, and that these represent a substantial advance on the past practice of negotiating long, case-by-case agreements.

Interpretation of Microsoft's promises is made less straightforward by a lack of any specific identifier of exactly which elements in the 6,000-page OOXML draft specification are "necessary" in patent terms, and thus covered, as opposed to not "necessary", and thus still exposed, Vaile said.

Another contributor to the uncertainty in this area is the reluctance of Microsoft to discuss the potential interaction of the OSP with free or open-source software licenses such as the General Public License (GPL).

Mutkoski asserted that, if the OSP is good enough for European standards body Ecma and good enough for the likes of Apple and Novell to consider their own implementations, it should be good enough for the wider industry.

Vaile observed that Ecma's support, as a trade association that can potentially be influenced by business relationships, should not be seen as conclusive evidence as to whether a particular term is comprehensible to ordinary users of the document.

The likes of Apple and Novell too, Vaile said, are able to "play the patent game as business equals", in that they have a patent portfolio to bargain with.

"Smaller players and non-IT firms--those who are not and perhaps cannot be in close business deals with Microsoft--are potentially at a disadvantage in not having either a relevant competing patent portfolio to bring to negotiations, or the legal resources to assess the level of risk," Vaile said. "This is why a truly global open standard ideally needs to be dealt with in a way that removes obvious sources of uncertainty for smaller participants as well."