Non-assertion covenant

A Non-Assertion Covenant is a declaration of non-enforcement by Sun Microsystems for its US and foreign patents against any implementation of the Open Document Format for its Office Applications. It offers an effective model for software industrial standards.

The non-assertion covenant is being praised as a creative mechanism for patent management in the OASIS open standards development context and is a model for patent protection that doesn't involve the glorification of software patents.

From www.ipHandbook.org (extracted with permission) Krattiger A. 2007. The Use of Nonassertion Covenants The Use of Nonassertion Covenants

"Nonassertion covenants (nonasserts for short) grant permission to third parties to practice a patent they would otherwise infringe. Legally, nonasserts are patent-infringement settlement agreements that are designed and drafted with the purpose of preemptively resolving future infringement disputes. Nonasserts can take three forms: (1) an agreement between two parties, (2) an agreement among several parties, or (3) a public statement. A non-assert can specify the release of only certain patent rights or fields of use, or it can be broad and specify release for entire patent families, including future inventions in a certain area. Public statements effectively place rights to patents, or elements thereof, into the public domain. Nonasserts nevertheless need to specify, precisely, which rights are granted in order to avoid ambiguity that could lead to equitable estoppel.

Nonasserts can have wide-ranging implications in terms of enhancing public sector R&D. One application could be with patent rights covering research tools that are critical for accelerating the development of essential biotechnological applications. Specifically targeted non-asserts can also be effective instruments for industry to permit the use of patented inventions anywhere in the world, provided such use is for the express purposes of addressing specific humanitarian needs in developing countries. This could have broad-ranging and significant positive impact, as this approach reduces transaction costs, encourages innovation to help the poor, and accomplishes this without any loss of commercial opportunities."

From: Krattiger et al. 2007 "Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices", Managing Innovation for a Better World