The ISO standards body will take the unprecedented step of withdrawing the JPEG image format as a formal standard if Forgent Networks, a small Texan company, continues to demand royalties on a seventeen-year old patent.
The Register has spoken to representatives of both the JPEG committee and Forgent Networks this week.
According to Richard Clark, JPEG committee member and JPEG.org webmaster, Forgent's royalty grab - coming after two decades of royalty-free use - means that ISO is obliged to withdraw the specification.
"Under ISO terms, formally you can only have a standard you can implement on free or RAND terms. "Reasonable and non discriminatory (RAND) terms are typically published, and the same for everyone. It's clear that Forgent's claims are not RAND. $15 million doesn't sound like free to me, and Forgent is not publishing the terms of their licensing.
"ISO will withdraw the standard: JPEG will be no more," he told us. However, ISO itself cannot formally take a stance on the patent, he added.
"JPEG have traditionally tried to make it available for free; there is no JPEG LA, like the MPEG LA," he pointed out.
"Our current assumption is that the patent is not valid," said Clark. However Clark says that since the patent becomes invalid in 2004 (under the old rules, seventeen years after filing, rather than twenty years after a grant) there is little incentive for manufacturers to bow to Forgent's terms.
A spokesperson for Forgent declined to rule out litigating against manufacturers who decline to pay Forgent royalties on the claim.
Clark blamed the collapse of the "new economy" for unleashing speculative claims such as Forgent's on long-established free standards. Forgent acquired the patent in 1997.
"Typically cross-licensing has kept things in check - the holder was a manufacturer and not just a license grabber. But with the demise of the dot coms the only things left in the locker are bits of paper. And people are pursuing it fairly vigorously," he said.
Forgent's PR manager Hedy Baker told The Register that the company was in talks with a number of manufacturers. She declined to name the company which paid $15 million for rights to use "patent 672".
"It covers a specific method that's used in part of the process in a JPEG," she said.
"This is a licensing program: we have a legitimate patent," she told us.
But it's a very widely established standard and no one has tried to collect royalties from the transmission of JPEGs before?
"They only started delving into it a year and half ago when the new management team came in. We're speaking with device manufacturers."
But it also includes web browsers?
"Yes, it could right."
And everyone who's writing client side software that receives a JPEG?
"It applies to anyone who uses a specific algorithm. We are contacting device manufacturers," she said.
Would you litigate against companies who refuse to license JPEG?
"I really don't have information on that."
Was Forgent confident it could handle claims of prior art which invalidate the claim?
"We have the rights to this specific technology. There's nothing I can tell you about the licensing program beyond what I've stated.
But the patent expires pretty soon - in, 2004 in fact - so there's very little incentive for a manufacturer to enter into an agreement when two or three years down the line it's going to become invalid, isn't it?
Ms Baker declined to provide more detail.
No safe haven
Clark says he hopes the furore will help restrain European agencies from aping US patent law.
"It's becoming impossible to set standards in multimedia; huge numbers of patents are granted. In Japan there are 4,000 patents on image and wavelet technology alone. It's followed the US model, where for many, many years, the US has allowed patents on very small changes to very detailed technical terms and where the benefits are few," said Clark.
He advocates shifting the burden of proof onto the patent holder.
"Originally patents were a bargain to protect a little man with a brilliant invention. Now they're held by big corporates, and often extended beyond the lifetime of the product. He would like to see what clauses of a standard a claim applies to within six months of the standard being published; and for patent claimants to publish details of their licensing.
He would also like to see international agreement: "...but that would mean running it through ISO, WIPO and national governments, and I can't see it happening with any kind of finite timescale.
And there aren't any safe havens, he warns.
"You can't create a standard that doesn't infringe patents - PNG or Ogg Vorbis could equally be challenged. So it's no good saying something is patent free." ®