Every now and then I hear people say «we don’t (need to) worry about intellectual property, in particular patents, we rely on open-source software».
Let us examine this dangerous misconception and explore how open-source licenses and patents may conflict.
Intro
A patent provides the holder with the right to prevent others from manufacturing, utilizing, or distributing the patented innovation. Conversely, the fundamental principle of open-source licensing is that the "source code" of a software should be accessible for anyone to inspect, utilize, and adapt to their needs.
However, source code and software inventions are not the same. Hence, despite the source-code being open source, the invention behind it, i.e. technical concept(s) it implements may be protected by patents – by the open-source licensor or other - which may pose certain Freedom to Operate (FTO) risks that need to be carefully assessed.
Freedom to Operate risks, despite using open- source software
There are a few different constellations when freedom to operate needs to be carefully assessed despite reliance on open-source licenses.
- Scenario A: Open-source license does not provide any patent grants
This is the more apparent and easily identifiable case where an open-source license merely lifts or limits the copyright on the work but does not address patents at all. In this case, it is apparent that the use of an open-source license does not have any beneficial effect on Freedom to Operate with respect to patent rights.
- Scenario B: The open-source license does provide patent grant
The need of assessment of the Freedom to Operate is more difficult to recognize in this scenario. After all, the open-source license does grant license(s) to patents covering your open-source software-based solution, right? Well yes and no.
Yes, certain open-source licenses do grant a license to patents held by the licensor (referred to as Contributor in several open-source licenses) on the open-source software.
But:
NO #1: open-source contributors are not in a position to grant a license to patents held by 3rd parties.
NO #2: even open-source licenses that do grant patent licenses (to patents held by the Contributor), such a patent grant is limited to the contributor’s essential patent claims (terminology used by GNU but other open-source licenses implement the same concept using different terminology). A contributor’s essential patent claims are those patent claims that would be infringed by the contributor’s version of the open-source software, but do not grant a license to patent claims that would be infringed only as a consequence of further modification of the contributor version.
And here lies one of the biggest pitfalls of (false) reliance on patent grants by open-source licenses: Most, if not all users of open-source software will modify the open-source software, modifications which fall outside the patent grant of the open-source license.
IP strategies around open-source licenses
In our practice we have come across deliberate IP strategies making use of (or exploiting) the limitations of patent grant clauses of open-source licenses to essential patent claims.
One of such IP strategies combines:
- Releasing a piece of software under an open-source license (even one comprising a «patent grant») ensuring the software is widely used, especially in research.
- Patenting various technical applications of the software, which would not be infringed by the open-source software itself but by putting said software to practical use. Hence, adopters of the software (that was “generously” released under an open-source license) who put the open-source software to technical use become liable for infringement of patent rights on technical applications.
Don’t become a victim of the pitfalls of patent grants of open-source licenses, a well-crafted IP strategy takes into account the trade-off inherent in both open-source licensing and patenting and can leverage the strengths of both systems to drive innovation while managing legal risks.
Get in touch if you have any questions!
