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- Written by: Philip Kerpen
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OSS and Software Patents: Conflict or Synergy?
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- First published 14 September 2024
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!
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- Written by: Zoltán Gyenge
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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!
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- Written by: Zoltán Gyenge
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Have you publicly mentioned your invention before filing for a patent?
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- First published 10 July 2024
By now, hopefully everyone is aware that one should publicly «disclose» their invention only AFTER having applied for a patent.
So far for the theory. In practice, there are several, some valid, some less valid reasons why someone would publicly present their invention without applying for a patent first:
- Unawareness of the absolute novelty requirement*
- Underestimating the invention’s value. It is quite common that one realizes the true value of an idea only upon the idea being positively received.
- Timing constraints
Having witnessed on several occasions inventors sadly mentioning its too late to apply for a patent following a very successful, yet public presentation, I would like to raise awareness that all may not be lost:
- If the idea was presented in general terms, only as a problem statement that the idea addresses, or as a black-box sort of demonstration, where the internal workings (of a device, algorithm, etc.) are hidden, there are good chances the public disclosure was non-enabling and hence does not prevent patentability.
- Even if the public disclosure was detailed and specific enough to be considered enabling, the invention is still patentable in several jurisdictions (including Japan and USA)**, if it was the inventor who made the invention public. However, it is important to note that there are strict time limits as to how patenting inventions previously disclosed by their inventor is possible, referred to as grace period, ranging between 6 and 12 months.
Relevant for major markets such as the USA, Germany, and Japan: If you've recently presented or published your invention, contact your patent attorney Zoltán Gyenge at your trusted IP law firm RENTSCH PARTNER AG to advise you on patenting post-disclosure.
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- Written by: Moritz Hönig
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Nationalization of an international patent application: Tips for Startups
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- First published 18 June 2024
When applying for patent protection worldwide, startups often use the Patent Cooperation Treaty (PCT) system. Under the PCT system, a single international patent application is filed, which is then nationalized in the desired countries or regions. The deadline for this is 30 or 31 months from the priority date for most countries/regions.
But in which countries or regions should a startup pursue its international patent application? Here are some considerations when selecting your countries and regions of interest:
Target Markets: File in countries/regions where you intend to exploit (e.g. manufacture, distribute, sell or use) your technology. Include the markets that are key to your industry and to your business strategy.
Block competitors: Nationalize in countries where key competitors operate or are located to build leverage.
Budget: Patent costs typically increase with national phase entry due to parallel prosecution in different countries. Therefore, plan your budget accordingly and remember that national/regional phase entry costs are due 30/31 months after the priority date.
Don't be driven by fear of missing out and consider the opportunity cost of extensive country lists: Since the national/regional phase entry deadline cannot be easily extended, some startups may be tempted to opt for rather extensive country lists out of fear of missing out. For example, some startups may be tempted to include not only their key markets, but also potential second- and third-tier markets - after all, you never know what will happen, and you certainly don't want to miss out, right?
Of course, there is no one-size-fits-all approach. For example, when pursuing an exit strategy, it may make sense to file a PCT application in a long list of countries/regions, thereby keeping all options open for a potential buyer, who may then trim the list of countries/regions at a later date. However, startups should also consider the opportunity cost of an extensive country list - in other words, what else could the money required for extensive nationalization be spent on instead? For example, it might be more effective to double down on strong IP protection in core markets and to strengthen the IP portfolio in these key markets by filing divisional patent applications or new patent applications, rather than including the n-th maybe-at-some-time-in-the-future country. With this approach, the costs allocated to the different countries/regions would be more in line with the commercial importance of the respective market.
Legal System and enforceability: Consider the enforcement mechanisms and capabilities of the countries of interest. Some countries have more experience enforcing patents than others.
These are general considerations. For specific advice, consult a patent professional to develop an effective global patent strategy.
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- Written by: Claudia Gessler
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Why an entry in the commercial register does not provide sufficient protection
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- First published 14 May 2024
Why should you register a trademark if your company is already registered in the commercial register and the company name is therefore protected?
- The company name is the name entered in the commercial register and grants the exclusive right to use this name to identify a company.
- However, if you want to prevent someone else from using identical or similar names for products and services offered, a company name may not be sufficient.
- In this case, it is advisable to register a trademark!
- The trademark gives the owner the exclusive right to use it to identify the goods and services claimed and to prevent others from using identical or similar signs for identical or similar goods or services.
- In addition, unlike a company name, a trademark can be used to protect not only a word but also different types of signs, including logos.
- Have you not yet registered your trademark? Do you use a logo? Have new products or services been added since the trademark filing?
- We are happy to support you! Contact me at
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