Geoworks Corp. last week unveiled a licensing program to collect royalties on a user-interface method employed by the Wireless Application Protocol and Wireless Markup Language for which it says it holds essential intellectual property rights.
While others have made essential IPR claims on WAP technology, Geoworks is the first to follow its essential IPR claim with a licensing program. The company made the initial claim last May, posted on the WAP Forum’s Web site.
It since has sent WAP Forum members a letter explaining the claim and a white paper outlining the patent technology and licensing arrangements.
An essential IPR claim states that the only way to implement a certain portion of a standard’s specification is through proprietary technology held by a certain company.
In this instance, Geoworks claims the WAP specification uses a method it invented, relating to the way applications and user interfaces communicate.
“In the early 1990s, Geoworks invented a unique process for designing generic user interfaces for application programs, enabling the same application to run on a broad range of platforms,” the company wrote in its letter to forum members.
It allows the application to dictate the minimum requirements needed for it to run on a given user interface. For instance, the application tells the phone it must have at least three lines of display screen and one soft key to work with the phone’s user interface. Ideally, the application may work better with six lines, two soft keys and a jog dial. The phone’s user interface outlines its abilities and the application adjusts to meet those conditions.
“One of the issues WAP had to define was how applications could be run appropriately on different phones,” said Dave Grannan, Geoworks president and chief executive officer. “That happens to be the very patent Geoworks filed.”
It’s called a flexible user interface, which Geoworks patented in July 1994, giving it rights and legal protection in the United States and Japan through July 2011.
“From our perspective, everyone will have to use this method,” Grannan said.
This includes carriers offering WAP services, mobile phone and personal digital assistant manufacturers, WAP microbrowser and server manufacturers, WAP application service providers and distributors, WAP consulting services and WAP sites, according to the letter sent to WAP members.
“There’s no other way for WAP to work. It’s embedded in the architecture of WAP. It’s pervasive throughout the technology,” Grannan said.
The company is offering different licensing arrangements based on the types of WAP products and services each offer.
It is not unusual for a standard to include technology invented by another, and most standards organizations have IPR policies in place to negotiate these claims. All members of the WAP Forum sign an IPR policy agreement when they join, which lays out the process to enable members to license technology from other members.
“We encourage all our members to deliver what they feel is a fair IPR when they have it,” said Greg Williams, chairman of the WAP Forum. “We’re pleased Geoworks intends to conform and comply with that policy.”
He said the WAP Forum does not concern itself with the agreements themselves, only the blueprints for how they should be issued to members. “I’m aware of others who have made claims of essential IPRs,” Williams said. “We expect more.”
Also making essential IPR claims on the WAP Forum Web site are NEC Corp., Nokia Corp. and Phone.com Inc., as well as an individual inventor.
Once a claim is made, the company making it must spend several months confirming the claim is valid legally and determine a licensing process for it, if any. Since first posting the essential IPR claim in May, Geoworks spent eight months doing this.
“To ask for royalties is a serious thing,” Grannan said. “We wanted to make sure we had something that was being implicated.”
“We have been studying the intellectual property, financial liability and licensing issues carefully with an experienced team of advisers for quite some time,” said Don Ezzell, Geoworks chief operating officer and general counsel. “Our objective is to handle technology royalties in the businesslike manner proposed by the WAP Forum and we believe our comprehensive licensing program is the right approach.”
Both Williams and Grannan expect other companies will announce similar licensing programs soon, and some cross-licensing will occur between companies holding essential IPRs used by the other.
“This probably will bring the issue to the forefront,” Grannan said. “It’s a stage we have to go through. WAP is an open standard, but there are royalty payments that have to be made. It’s an important step. You don’t want to take it lightly.”
Of particular concern is the potential royalty payments have to negatively influence WAP adoption.
“You have to be careful to get the royalties, but not in a way that will inhibit growth in the WAP world,” Grannan said. “I think the licensing program we laid out is very fair and reasonable.”
He said Geoworks already has had licensing discussions with Sprint PCS, Nokia, Toshiba, Mitsubishi and Phone.com.
