NIST PQC License Summary and Excerpts
=====================================

NIST has entered into two patent license agreements to facilitate adoption of NIST’s announced
selection of Public-Key Encryption PQC algorithm CRYSTALS-KYBER. NIST and the
licensing parties share a desire, in the public interest, the licensed patents be freely available to
be practiced by any implementer of the CRYSTALS-KYBER algorithm as published by NIST.

The licenses cover a patent portfolio privately owned by a US entity (US Portfolio) [1]_ and a
portfolio controlled by French institutions (French Portfolio) [2]_.

The licenses were drafted such that any implementer of the CRYSTALS-KYBER algorithm as
published by NIST receive the benefits of a grant to the licensed patents within the scope of a
field of use limited to implementing CRYSTALS-KYBER as a PQC algorithm. The licensors
agreed, on a royalty-free basis, to place into abeyance any right of enforcement of the licensed
patents against any implementer or end-user of the algorithm.

Relevant language (with modifications for readability) from the licenses regarding the scope of
use permitted to implementers of the CRYSTALS-KYBER algorithm follow. Where language
differs between the licenses in a manner which could be read to influence the rights of
implementers, the language of both licenses is presented.

.. [1] U.S. Pat. No. 9,246,675 and all related patents and applications.

.. [2] EP App. No. 11712927; EP Pat. No. 2537284; French Pat. App. No. 1051190, French Pat. No. 2956541; PCT App.
   No. PCT/FR2011/050336; U.S. Pat. App. No. 13/579,682; U.S. Pat. No. 9,094,189; and all related patents and
   applications.

1.3
###

US Portfolio
------------

“IMPLEMENTER” shall mean any
entity, person, company, organization,
foundation, or business, whether private,
public, or governmental, that implements the
PQC ALGORITHM in paragraph 1.11 for any
purpose that complies with the license granted
in paragraph 2.1, whether such implementation
is for research, teaching, and other non-
commercial purposes or for the purpose of
commercial manufacture, distribution, or
provision of services or products for a fee.

French Portfolio
----------------

“IMPLEMENTER” shall mean any
entity, person, company, organization,
foundation, or business, whether private,
public, or governmental, that implements the
PQC ALGORITHM in paragraph 1.11 for any
purpose, whether such implementation is for
research, teaching, and other non-commercial
purposes or for the purpose of commercial
manufacture, distribution, or provision of
services or products for a fee.

1.5
###

US Portfolio
------------

“LICENSED PRODUCTS” shall mean
any apparatus or composition encompassed
within the scope of a claim in the LICENSED
PATENT and implementing the PQC
ALGORITHM, and shall also include a
product that was manufactured, at least in part,
by a process encompassed within the scope of
a claim in the LICENSED PATENT that has
not been held not patentable, invalid, or
unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

French Portfolio
----------------

“LICENSED PRODUCTS” shall mean
any apparatus or composition encompassed
within the scope of a claim in the LICENSED
PATENTS and shall also include a product
that was manufactured, at least in part, by a
process encompassed within the scope of a
claim in the LICENSED PATENTS that has
not been held not patentable, invalid, or
unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

1.6
###

US Portfolio
------------

“LICENSED PROCESSES” shall
mean any process that implements the PQC
algorithm and, in the course of being practiced,
would be encompassed within the scope of a
claim in the LICENSED PATENT that has not
been held not patentable, invalid, or
unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

French Portfolio
----------------

“LICENSED PROCESSES” shall
mean any process that, in the course of being
practiced, would be encompassed within the
scope of a claim in the LICENSED PATENTS
that has not been held not patentable, invalid,
or unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

1.7
###

US Portfolio
------------

“LICENSED USES” shall mean any
method encompassed within the scope of a
claim in the LICENSED PATENT and
implementing the PQC ALGORITHM that has
not been held not patentable, invalid, or
unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

French Portfolio
----------------

“LICENSED USES” shall mean any
method encompassed within the scope of a
claim in the LICENSED PATENTS that has
not been held not patentable, invalid, or
unenforceable by an unappealed or
unappealable judgment of a court of competent
jurisdiction or governmental administrative
body.

1.8
###

“LICENSED TERRITORY” shall mean worldwide wherever a VALID CLAIM exists.

1.9
###

“VALID CLAIM” shall mean: (a) a claim of an issued and unexpired patent within the
LICENSED PATENTS that has not been (i) held permanently revoked, unenforceable,
unpatentable or invalid by a decision of a court or governmental body of competent jurisdiction,
unappealable or unappealed within the time allowed for appeal, (ii) rendered unenforceable
through disclaimer or otherwise, (iii) abandoned, or (iv) permanently lost through an interference
or opposition proceeding without any right of appeal or review; or (b) a pending claim of a
pending patent application within the LICENSED PATENTS that has been asserted and
continues to be prosecuted in good faith where such claim has been pending for a period of ten
years or less.

1.10
####

“FIELD OF USE” shall mean any implementation of the PQC ALGORITHM in 1.11.

1.11
####

US Portfolio
------------

“PQC ALGORITHM” shall mean:
(a) any standard prescribed by NIST in a
NIST Special Publication or Federal
Information Processing Standard that is based
on the CRYSTALS-KYBER public-key
encryption and key-establishment algorithm
selected by NIST under the announcement for
submission of candidate algorithms for
public-key post-quantum standards published
in volume 81 page 92787 of the United States
Federal Register on December 20, 2016,
available as of the EFFECTIVE DATE at
https://www.federalregister.gov/documents/2016/12/20/2016-30615/announcing-request-for-nominations-for-public-key-post-quantum-cryptographic-algorithms,
or a subsequent such NIST announcement;
(b) a documentary standard set by a standards
development organization (SDO) or standards
setting organization (SSO); and
(c) a government regulation or statute,
wherein for each instance of (b) and (c) of this
paragraph, only to the extent identical with
parameters of the standard prescribed by
NIST, and
NIST will use reasonable efforts to have a
citation to the standard prescribed by NIST
included in each instance of (b) and (c) of this
paragraph.

French Portfolio
----------------

“PQC ALGORITHM” shall mean a
post-quantum cryptography algorithm
selected by NIST under the announcement for
submission of candidate algorithms for
public-key post-quantum standards published
in volume 81 page 92787 of the United States
Federal Register on December 20, 2016,
available as of the EFFECTIVE DATE at:
https://www.federalregister.gov/documents/2016/12/20/2016-30615/announcing-request-for-nominations-for-public-key-post-quantum-cryptographic-algorithms,
or a subsequent such NIST announcement,
and any standard based on a selected post-
quantum cryptography algorithm as may be
prescribed in a NIST Special Publication,
Federal Information Processing Standard, a
documentary standard set by a standards
developing organization (SDO) or standards
setting organization (SSO), or a governmental
regulation or statute.

2.1
###

LICENSORS, on behalf of themselves and any successors and/or assigns, grant to
LICENSEE an exclusive, non-transferable, fully paid-up, and irrevocable license, with the right
to grant sublicenses [3]_, under all claims of the LICENSED PATENTS:

(a) to make, have made, use, sell, offer for sale, lease, import, export or otherwise dispose of
the LICENSED PRODUCTS,
(b) to practice the LICENSED PROCESSES, and
(c) to practice the LICENSED USES,

in the LICENSED TERRITORY.

.. [3] The Algo Consulting, Inc. agreement additionally contains terms limiting sublicensees to the FIELD OF USE.

2.2
###

LICENSORS agree that this Agreement extends and confers all benefits of the grant in
paragraph 2.1 to all IMPLEMENTERS and their end-users on a royalty-free basis for the FIELD
OF USE.

2.3
###

LICENSORS hereby, on a royalty-free basis, place into abeyance any right of
enforcement of the LICENSED PATENTS against any IMPLEMENTER and their end-users
from any and all actions, causes of action, claims, or demands whatsoever in law or equity as to
all claims for patent infringement, direct and/or contributory and/or by inducement or otherwise,
which may arise at any time on or after the EFFECTIVE DATE, which could be asserted against
any IMPLEMENTER, or against any of IMPLEMENTER’s end-users, whether direct or
indirect, or immediate or remote, arising out of any implementation of the PQC ALGORITHM
commensurate in scope with the FIELD OF USE, including manufacture, having manufactured,
use, sale, offer for sale, lease, import, export, or other disposition of the LICENSED
PRODUCTS, practice of the LICENSED PROCESSES, and practice of the LICENSED USES in
the LICENSED TERRITORY for the FIELD OF USE.

2.4
###

US Portfolio
------------

Contingent upon LICENSEE’s
payment of such portion of the PAYMENT
due licensor, LICENSOR hereby releases and
discharges LICENSEE, any
IMPLEMENTER, whether direct or indirect,
or immediate or remote, in the LICENSED
TERRITORY, from any and all actions,
causes of action, claims, or demands
whatsoever in law or equity as to all claims
for patent infringement, direct and/or
contributory and/or by inducement or
otherwise, which LICENSOR has or may
have had at any time prior to the EFFECTIVE
DATE, which could be asserted against any
IMPLEMENTER, or against any of
IMPLEMENTER’s end-users, whether direct
or indirect, or immediate or remote, solely to
the extent arising out of any implementation
of the PQC ALGORITHM commensurate in
scope with the FIELD OF USE, including
manufacture, having manufactured, use, sale,
offer for sale, lease, import, export, or other
disposition of the LICENSED PRODUCTS,
practice of the LICENSED PROCESSES, and
practice of the LICENSED USES in the
LICENSED TERRITORY for the FIELD OF
USE. In the case of any lack or delay of
federal appropriations to NIST delaying the
portion of the PAYMENT due licensor, the
releases of LICENSOR in the paragraph shall
apply retroactively for any period during this
agreement for which a lapse may have
occurred due to late payment.

French Portfolio
----------------

LICENSORS hereby release and
discharge LICENSEE, any IMPLEMENTER,
whether direct or indirect, or immediate or
remote, in the LICENSED TERRITORY,
from any and all actions, causes of action,
claims, or demands whatsoever in law or
equity as to all claims for patent infringement,
direct and/or contributory and/or by
inducement or otherwise, which LICENSORS
have or may have had at any time prior to the
EFFECTIVE DATE, which could be asserted
against any IMPLEMENTER, or against any
of IMPLEMENTER’s end-users, whether
direct or indirect, or immediate or remote,
arising out of any implementation of the PQC
ALGORITHM commensurate in scope with
the FIELD OF USE, including manufacture,
having manufactured, use, sale, offer for sale,
lease, import, export, or other disposition of
the LICENSED PRODUCTS, practice of the
LICENSED PROCESSES, and practice of the
LICENSED USES in the LICENSED
TERRITORY for the FIELD OF USE.

2.5
###

LICENSORS provide the GRANTS, RELEASES, DISCHARGES, AND ABEYANCE
OF ENFORCEMENT in this Article II with or without notification to any IMPLEMENTER or
its end-users.

2.6
###

LICENSORS reserve the right to (a) use technology covered by any claim of the
LICENSED PATENTS; (b) grant rights to the LICENSED PATENTS for uses outside of the
FIELD OF USE; and (c) enforce the LICENSED PATENTS for uses outside of the FIELD OF
USE.

2.9
###

**US Portfolio Only**

For the sake of clarity, any implementation or use of the
LICENSED PATENT by LICENSOR, SUBLICENSEE or any of the party that does not meet
the definition of the PQC ALGORITHM, including any modification, extension, or derivation of
the parameters of the PQC ALGORITHM, is not an implementation or use of the PQC
algorithm.
