I'm often asked by companies whether patenting software makes sense, given that they use open source software and may even want to open source parts of their software themselves.

Let’s untangle this question a bit and explore the often complex relationship between open source software licensing and patents in today's tech landscape.

Intro

By default, software you or others develop is protected by copyright and is therefore proprietary. Open source software (OSS) licenses lift the copyright or define specific clauses governing how the open source software may be used, modified and distributed. Permissive licenses (e.g., MIT, Apache) allow for more flexible use, including in proprietary software. Copyleft licenses (e.g., GPL) require derivative works to be distributed under the same open source terms.

Patents, on the other hand, are a legal right granted on application to new and inventive inventions, and not all software you develop will be considered patentable (this depends on jurisdiction).

OSS and patents represent two distinct approaches to intellectual property protection. While OSS promotes disclosure, collaboration, and open innovation, patents grant exclusive rights to inventors. However, these two concepts are not mutually exclusive and often intersect in interesting ways. For example, a piece of software may be considered proprietary under copyright, however not be protected by any patent (this may leave room for work-around solutions). The software may, on the other hand, be open source but protected by patents, and so on. Below, we cover a number of such constellations and some special considerations.

Patent Implications in Open Source

Many open source licenses include patent clauses that affect how patents can be used in relation to the licensed software:

• Patent grants: Some licenses, like the Apache License 2.0, include explicit patent grants, allowing users to utilize any patents held by contributors that are necessary to use the software.
• Patent retaliation clauses: These provisions terminate the license if a user initiates patent litigation against the software or its contributors.

Challenges and Considerations

Developing software today without using OSS in some form is almost unthinkable, therefore all software companies must carefully consider their IP strategy also as it relates to patents.

• For example, OSS may inadvertently infringe on existing patents. Most open source licenses do not provide patent indemnification, include explicit patent grants or contain liability protection. Companies are advised to consider their freedom to operate (FTO).
• Further, while companies can file patents on their contributions to OSS projects as they relate to new inventions, they need to be sure to abide by the terms of the open source project, which may make such patents unenforceable.

Companies may also make patent pledges to not assert their patents against particular entities, types of users, or uses of their patented software. This can allow for the company to retain exclusivity for particular use-cases, while still benefiting from what OSS licensing can bring.

Compliance

To ensure and monitor ongoing compliance, companies need to track all OSS components used in their software and their associated licenses, with reviews especially important before distributing the software or during due diligence for transactions.

Balancing Innovation and Openness

While patents can incentivize investment in R&D as they provide a period of exclusivity, open source fosters transparency, collaboration, rapid innovation and community.

Finding the right balance is crucial for promoting both innovation and accessibility in the software world and can have big implications for the business strategy and business model of a company.

A well-crafted IP strategy takes into account the trade-offs inherent in both OSS 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!