Securing Access to Intellectual Property Rights for Implementing the Accessible Portable Item Protocol (APIP) Standard without Infringing upon Patented Claims

Background

As a not-for-profit company with a mission of using assessment to improve teaching and learning, Measured Progress has long worked to promote the success of all students. We were among the first to meet the challenge in IDEA 1997 of assessing students with the most severe cognitive disabilities. Since then we have worked nationwide on alternate assessment programs, developing an extraordinary range of approaches, and participating with state education agencies in a series of Department of Education grants to break new ground on the so-called 1% and 2% assessments and firm up the technical foundation for this important work.

Beginning in the last decade, Nimble Assessment Systems (which we acquired in 2010) was equally dedicated to using research and technological advances to make digital content accessible to an expanding range of students, which not only led to the building of a system used for that purpose but also to the patent awarded in 2012. Principals there, along with other technical experts and participants from eight states, were instrumental in developing APIP and we continue to support the effort in numerous ways—from participating in multi-state grants for enhancing effective APIP implementation to educating stakeholders and policy makers about the potential benefits for a wide range of students.

The APIP standard is by definition an open, industry standard adopted by and managed through the not-for-profit, membership organization IMS Global Learning Consortium (IMS). Measured Progress does not in any way own the standard. However, our dedication and interest in accessibility led us to develop and patent methods and a system for delivering digital assessment content with embedded accessibility supports tailored to the specific accessibility needs of each student. We think the intellectual property contained in our patent will be useful for organizations developing systems capable of delivering accessible assessment content, regardless of whether they are APIP-compliant or not.

In order to fulfill our intent to make it easy for states to switch vendors and content without having to re-format content and consistent with our mission and this history of effort, we are pleased to offer access to our patent at no cost to those desiring to comply with the specifications and become APIP-certified. Both the need and the opportunity are great. Fully implementing APIP so that all students have access to digital assessment content, not only for accountability testing but throughout the year, will require the concerted, deliberate, and thoughtful effort of the testing industry. Having a single commonly embraced standard moves us all forward.  We’re honored to play a part in this critical undertaking.

The intent and concepts underlying our free license

This section explains our free license in simple layman’s terms. The license itself, with specific conditions and more jargon – but we hope clear language – appears in the next section. If any apparent discrepancies exist between this general description and the license, the license is the governing text.

We think the patent awarded to us contains multiple necessary claims that cover methods and functionality required for assessment delivery systems to deliver assessment content with accessibility features tailored to each student’s access needs in accordance with the APIP standard. We think these claims fall within IMS’s definition of “Necessary Claims.” We also think they comprise an effective method for developing an APIP-certifiable delivery system and therefore facilitate, rather than hinder, APIP adoption. They enable development organizations to build elegant, efficient, and user-friendly systems. To support the widespread implementation of APIP, we decided to provide free access to the entire patent to entities committed to having their systems be APIP-certified. Our intent is to support other organizations in adopting a single, common, non-proprietary standard to build accessible assessment content and deliver that content to students, tailored to their accessibility needs.

Our free license allows anyone to use the intellectual property contained in our patent to develop assessment delivery systems as long as they have the systems certified by IMS as APIP-compliant as described in the license by the later of January 1, 2015 or 180 days from when the systems are commercialized (certification, including resolving issues or disputes over certification, and what we mean by commercialization are addressed more fully in the license).

The principle of requiring APIP certification that underlies our license promotes the ability of states and the assessment industry to have a common and well-documented standard that is managed by an independent standards body (IMS) and supported by an active, open community of users and content and system developers. The principle is as consistent with the objectives of the states that initially collaborated to create APIP as it is in keeping with the stated goals of the states that are members of the several multi-state consortia building assessments and systems based upon the Common Core State Standards (CCSS).

Anyone familiar with intellectual property licensing will recognize that the license presented below is far simpler and less formal than is typical. We do require for tracking purposes only, that an authorized representative complete and submit the form to the right indicating acceptance of the terms. We also note that acceptance of the terms will be deemed to have occurred if a development organization takes advantage of our Reasonable And Non-Discriminatory-Zero cost (RAND-Z) license. We are taking this informal and open approach in the interests of promoting widespread APIP adoption and implementation and believing that IMS Intellectual Property policies and professional integrity and ethics will promote adherence to both the letter and the spirit of the license.

It is important to note that the license automatically protects delivery system users (i.e., the license imposes no requirements or conditions on them). It also imposes no requirements on organizations implementing unmodified, previously APIP-certified compliant delivery systems. Rather, the free license is designed for and applies to delivery system development and implementation organizations, which we break into two categories. First, those (whether for profit, not-for-profit, or government/public) developing systems for commercial purposes (which includes generating revenue directly or indirectly through fees, charges for delivered tests, etc.) are required to have their systems APIP-certified within a reasonable time frame – the later of January 1, 2015 or 180 days after the system is used commercially (as previously noted, the license provides more details about APIP certification and what we mean by commercialized). Second, those using delivery systems solely for research (i.e., not commercially) are not required to have their systems APIP-certified. Certain development and implementation organizations might fall under both categories if developing/implementing more than one system. In this case, they should follow the respective requirements for each system and the applicable category.

The requirement for APIP-certification best serves the needs of students and educators (including state and local education agencies) by promoting consistency in computer-based/online assessment. As a result, it also ensures fulfillment of our intent in providing free access to our patent.

APIP compliance will be demonstrated by official certification or other form of validation put in place and/or overseen by the IMS Global Learning Consortium and its member organizations. Currently, two profiles of APIP certification exist: entry and core, but additional APIP profiles are expected to be added based on market needs. For more information, please visit the IMS website.

Development organizations wishing to have delivery systems certified must become members of an IMS developer community, the QTI/APIP Alliance, which involves low annual dues. Alliance members receive technical support and the ability to certify as many products as they like (at no additional cost). They also receive updates to take advantage of the evolution of the specification. Benefits and dues of the IMS developer community are  available on the IMS website.

The license has several conditions that promote APIP and protect our interests and those of development and implementation organizations taking advantage of our RAND-Z license (i.e., licensees). First, the license covers all claims in our U.S. patent #8,303,309 and any other patent application or patent in its patent family (as defined in the license). The license conveys comprehensive rights as described in the license. We understand that various situations might arise that would lead development and implementation organizations to seek licensing rights beyond the scope of this RAND-Z license and in response we are willing to enter into good faith negotiations related to granting reasonable and non-discriminatory licenses, subject to reasonable consideration, which may include a requirement for the other party to grant us an equivalent license under its patents.

Second, any system development organization using our patent for free must allow us to use any of its Necessary APIP-relevant patented intellectual property for free. Note that IMS’s Intellectual Property Rights policies require IMS contributing members to make openly available any patented claims that are necessary (as defined by IMS policy) for required elements of a specification. To date, we are the only member that has done so for APIP. We are providing the free license to the only patent we have that relates to APIP. We are also making available for free the entire patent, including claims we believe not to be necessary for implementing APIP. We ask licensees to share only with us (unless they are subject to IMS policies that require more extensive sharing) their patent claims that are necessary (again, as defined by IMS policy) for implementing APIP systems. Measured Progress confirms it will have its delivery systems APIP-certified by IMS in accordance with the timing milestones set for licensees.

Third, any development organization accessing our patent for free (and we) agree not to challenge the other party’s intellectual property relevant to APIP under this license, unless either party is sued for infringement of a patent that is subject to this RAND-Z license or a reciprocal RAND-Z license granted by the licensee, per the paragraph above. The current RAND-Z license we are offering covers a single patent and its “family” of related patents. Should we obtain one or more future patents with claims that are necessary for implementing APIP (again, as defined in IMS policy), in accordance with our IMS membership obligations, we will make those claims openly available under a new, separate license with such terms and conditions that are appropriate at the time.

Fourth, the license isn’t transferrable unless the exceptions related to sublicensing that noted in the license apply.

Fifth, the license will remain in effect for the term of the patents covered by this license for APIP-certified systems and certain “bug fixes” and incremental changes to those “legacy” systems (as explained in the license). For all other systems the license will no longer apply if IMS or a successor organization ceases supporting APIP as an open standard and directly or indirectly certifying delivery systems for compliance with the standard. Should the conditions described in the preceding sentence occur, Measured Progress will provide advance written notice to all registered licensees and will post a notice on the license web page. As stated in the license, we are willing to enter into good faith negotiations related to granting reasonable and non-discriminatory licenses for systems that would no longer be licensed, subject to reasonable consideration, which may include a requirement for the other party to grant us an equivalent license under its patents.

RAND-Z License for all claims (Necessary and Non-Necessary Claims) for U.S. Patent 8,303,309

This is a free Reasonable, And Non-Discriminatory Zero-cost (RAND-Z) license from Measured Progress. It covers all claims (APIP Necessary and all remaining claims) in Measured Progress’s U.S. patent #8,303,309 and any other patent application or patent in its patent family, including continuations, divisionals, and CIPs, any reissues or reexaminations, and any foreign counterparts thereof, that include any Accessible Portable Item Protocol (APIP) Necessary Claims.  APIP Necessary Claims are as defined by IMS (IMS IPR Policy Definitions, Section 2). The scope of the license, throughout the world, is to make, have made, use, reproduce, market, import, offer to sell and sell, and to otherwise distribute, products that are certified as compliant with the APIP Specification. Measured Progress is willing to enter into good faith negotiations for the purpose of granting reasonable and nondiscriminatory licenses for products that are certified as compliant with the APIP Specification under others of its patents that do not include any Necessary Claims, such grants being subject to reasonable consideration, which may include a requirement for the prospective licensee to grant to Measured Progress a license of equivalent scope under its patents.

The RAND-Z license is subject to:

I. A grant by the APIP Development Organization (licensee) of a RAND-Z  license to Measured Progress under licensee’s APIP Necessary Claims (as defined by IMS IPR Policy Definitions, Section 2) throughout the world, to make, have made, use, reproduce, market, import, offer to sell and sell, and to otherwise distribute, products that implement the Required Elements of the APIP Specification; provided that such license does not extend to features of a product that do not constitute Required Elements.  For the avoidance of doubt, in order to qualify for this RAND-Z license, MP must meet all of the requirements that a licensee must meet in order to qualify for the RAND-Z license from Measured Progress as set forth elsewhere in this license.

II. A reciprocal agreement by the APIP Development Organization (licensee) and Measured Progress not to challenge the other party’s patents that are licensed to one another under this specific license; provided, however, that this obligation shall not apply if the challenger, or its customers, resellers, redistributors, or other users of products licensed under this agreement, is sued for infringement of a patent licensed under this specific license by the licensor or a successor in interest of such licensed patent.

III. APIP Development Organizations (licensees) may sublicense subsidiaries and contractors that are providing goods or services in furtherance of enabling the licensee to develop, market, and sell APIP-certified delivery systems. Otherwise, the license is not transferrable.

IV. Should IMS or a successor organization (i) discontinue support of APIP as an open standard and (ii) discontinue directly or indirectly certifying delivery systems for compliance with the standard, upon sixty (60) days written notice to registered licensees by either licensor and posting on the license web page, the licenses from either party to the other herein will not apply to any systems made, used, or sold or otherwise distributed thereafter. Notwithstanding the previous sentence, the license will remain in effect for the term of the patents licensed hereunder, for (i) those systems that were APIP-certified prior to the end of such notice period and (ii) bug fixes or other incremental changes to those systems that would not adversely affect functionality required for APIP certification; provided however, that in the case of the systems of (ii) above, upon its written request Measured Progress will have the right to review such systems to verify, in its reasonable judgment, that the requirements of (ii) have been met. Measured Progress is willing to enter into good faith negotiations for the purpose of granting reasonable and nondiscriminatory licenses for subsequent new releases and new versions of the systems of (i) and (ii) above, such grants being subject to reasonable consideration, which may include a requirement for the prospective licensee to grant to MP a license of equivalent scope under its patents.

V. The RAND-Z licenses set forth above are further subject to the following eligibility requirements, as applicable:

(i)  for developers and marketers of systems for which users are charged directly or indirectly for access and use, such systems shall be eligible for these licenses only if they are validated as APIP-compliant by IMS (or its contractor, or a successor to IMS) issuing a certification of APIP-compliance publically on imscert.org by the later of January 1, 2015 or no more than 180 days after the earliest of any of the following: the system is announced for general availability, the system is publicly listed as an offering with a part number, or the licensee has accepted payment for the system. If a dispute or litigation concerning IMS certification as APIP-compliant arises, the licensee or prospective licensee shall have up to 12 months from the date such certification would have been otherwise due to resolve the issue before the license is withheld; and

(ii)  for developers of systems for which users are NOT charged directly or indirectly for access and use of the systems, such systems shall be eligible for these licenses with no certification requirement, provided that if such systems are not APIP-certified when used such fact should be publicly disclosed.

For the avoidance of doubt, no certification requirements shall apply to users of such systems or to organizations implementing unmodified, previously APIP-certified compliant delivery systems. APIP-development organizations are expected to submit their delivery systems for certification to any of the IMS-approved APIP profiles as set forth in the website.

We would appreciate each development organization intending to implement our patent claims having an authorized representative complete and submit the form to the right indicating acceptance of the terms. We note that acceptance of the terms will be deemed to have occurred if a development organization takes advantage of our RAND-Z license. If any development organization desires a more formal license and evidence of execution, it should please contact Measured Progress.

For development and implementation organizations that do not fall within the categories above, Measured Progress will consider formally executing alicense to one or more of our claims within the cited patent under negotiated terms and conditions.

Please contact Measured Progress for questions regarding the license or for licensing other than on a RAND-Z basis.

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