IBM Patents for ebXML Raise Red Flag on Royalties for Standards

Can Freedom Last?

• By Matt Migliore
• 05/14/2002

IBM Corp. has received a patent, and is pursuing another, for technology used in the specifications for ebXML CPP and ebXML CPA, two emerging standards for negotiating e-business transactions. And while IBM issued a statement last month saying it will not charge royalty fees for use of the patents, concerns about patenting standardized technologies are mounting.

In recent years, standards-based computing has grown tremendously in popularity, and is currently the primary focus of most major vendors in the space, including Microsoft Corp., Sun Microsystems Inc., BEA Systems Inc., and IBM. By standardizing the methods through which different applications and systems communicate, vendors say they will be able to eliminate many of the integration problems large enterprises now face, allowing them to build Web-based solutions – commonly referred to as Web services – that can leverage the resources of a variety of different systems without a lot of back-end development.

IBM and Microsoft, specifically, have been able to drive widespread support for three Web services standards in particular, Simple Object Access Protocol (SOAP), Universal Description Discovery and Integration (UDDI), and Web Services Description Language. ebXML, which is the standard for which IBM announced its patent last month, is just one of many developing specifications that have not yet achieved the prominence of SOAP, UDDI, or WSDL.

However, public outcry over IBM’s application for patents under ebXML calls into question the ultimate intentions of companies working to establish new specifications as defacto industry standards.

According to Mike Rawlins, principal consultant for Rawlins EC Consulting, an application-integration firm that focuses on XML issues, IBM’s initial patent for its ebXML-related technology was issued under reasonable and non-discriminatory (RAND) terms. As a RAND patent, IBM reserves the right to charge royalty fees if it so wishes.

Following IBM’s announcement of its ebXML patent to the Organization for the Advancement of Structured Information Standards (OASIS), the standards body monitoring the development process for ebXML, OASIS’ ebXML Joint Coordinating Committee asked IBM to clarify whether its patent would require royalty fees to be paid by users.

In a statement issued by Robert Sutor, director of IBM’s e-business standards strategy, he said “IBM will NOT charge royalties on either the patent related to TPA (IBM’s patented technology under ebXML) or the additional one whose application we disclosed.” But, in the patent disclosure statement issued by IBM to OASIS – a requirement under OASIS intellectual property rights procedures – Chuck Adams, program director of standards, intellectual property & licensing for IBM, said “[IBM will] offer nonexclusive licenses under the issued patent, upon written request from the implementers. These licenses will be provided under reasonable and non-discriminatory terms and conditions, in accordance with IBM's then current licensing practices.”

According to Sutor, IBM does not plan to amend its original disclosure statement, and will merely qualify it by saying it will not charge royalty fees for its ebXML-related patents. Sutor made this qualification to OASIS via a short e-mail (Click here to see it.). OASIS could not be reached to comment as to whether the e-mail held any weight beyond a written promise not to charge royalty fees, or if there were any other legally binding documents to go along with it.

Although it appears IBM has left itself a loophole to charge royalty fees in the future if it chooses to do so, Rawlins does not believe IBM’s ebXML patents will curtail adoption of the ebXML standard. He says, “I think the situation has been diffused for right now.”

Rawlins says a big reason the controversy has died down so quickly, though, is in part because ebXML isn’t a widely used standard, and may never be. “To be brutally honest,” says Rawlins, “I think the initial window of opportunity for ebXML to really have a big impact was only about six months. When nothing was really done in the first six months, the window sort of closed.” As such, Rawlins feels ebXML, which was originally expected to be a godsend for the small-to-medium market as well as the enterprise, will never have market penetration in the application-integration space beyond that of electronic data interchange (EDI).

However, Rawlins is curious to see how the patent issue plays out for other more popular standards, namely SOAP. Both IBM and Microsoft hold a number of patents for technologies under the SOAP specification, which is being touted by most industry insiders as the messaging device that will be used to invoke Web services.

The development of the SOAP specification is being overseen by the World Wide Web Consortium (W3C). Members of the W3C, one of which is IBM, are currently amid a debate about the ethics of charging royalty fees for standard computing technologies. A final ruling is expected later this year.

“It will be interesting on down the road to see what’s going to happen with the Microsoft and IBM patents on SOAP,” says Rawlins.