Strategies to Reap the Benefits of Software Patents in an Open Source Software Environment
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The document discusses strategies for leveraging software patents within an open source software (OSS) environment, outlining the importance of protecting intellectual property (IP) and mitigating risks associated with OSS. It highlights key goals for commercial software vendors, trends in IP enforcement, and the implications of dual licensing in relation to OSS. Additionally, the authors emphasize the necessity of compliance with OSS licenses and the benefits of patenting innovations that might be distributed under these licenses.
Strategies to Reap the Benefits of Software Patents in an Open Source Software Environment
- 1. STRATEGIES TO REAP THE BENEFITS OF SOFTWARE PATENTS IN AN OPEN SOURCE SOFTWARE ENVIRONMENT November 8, 2017 Mary Lou Wakimura Giovanna Fessenden
- 2. 2 The opinions expressed herein are solely those of Mary Lou Wakimura and Giovanna H. Fessenden, do not necessarily represent those of Hamilton Brook Smith Reynolds, or any client or organization, and are not to be considered legal advice. STRATEGIES TO REAP THE BENEFITS OF SOFTWARE PATENTS IN AN OPEN SOURCE SOFTWARE ENVIRONMENT
- 3. 2 Offices Boston Seaport Innovation District Concord Route 128 Technology Corridor By the Numbers 1980 Year Founded 22 Technology Specialties Bioinformatics Biotechnology & Life Sciences Biologics & Immunotherapeutics Chemical Engineering Pharmaceuticals Chemistry Material Sciences Clean Technology Medical Devices Medical Imaging Mechanical Engineering Electrical Engineering Semiconductors Optics Robotics Mobile Internet of Things Network Infrastructure Telecommunications Computer Hardware Computer Software Business Methods 38 Attorneys, Patents Agents, Technology Specialists 20 Firm accolades since 2010, including: 3
- 4. 4 Mary Lou Wakimura Principal Background in computer- related technologies 30 years of IP law experience Technical expertise in imaging, video applications, medical systems, business or transactional methods, bio/chemical analysis, alternative energy, social networks, and electro- mechanical devices Recent Publications and Speaking Engagements "Innovating Outside the Patent: Copyrights, Trademarks and Software" Association of University Technology Managers’ (AUTM) Eastern Region Meeting, Boston, MA, October 3, 2017 “Smart Cyber Security, Patent and Trade Secret Protection for Startups,” MIT Enterprise Forum of Cambridge/Hamilton Brook Smith Reynolds Lecture, Cambridge, MA, November 17, 2016 Open Source Software Solutions (Part 3): Educating your Employees about Open Source Software Issues, Hamilton Brook Smith Reynolds, 2016 Open Source Software Solutions (Part 2): Understanding Open Source Software License Trigger Points and Resulting Obligations, Hamilton Brook Smith Reynolds, 2016 Open Source Software Solutions (Part 1): Getting to Know the Open Source Software in Your Products, Hamilton Brook Smith Reynolds, 2016 “Strategies for Commercial Software Developers Using Open Source Code in Proprietary Software,” Hamilton Brook Smith Reynolds Webcast, 2016
- 5. 5 Giovanna Fessenden Of Counsel Focus Areas block chain technology search engines / ad serving systems video compression / codecs trusted computing and encryption cryptocurrency wallet analytics video on demand (VOD) systems VoIP and video conferencing systems social media software database and storage systems recommendation systems integrated development environments (IDEs), compilers and interpreters iPhone™, Android™ and tablet applications CT imaging technologies wearable computing technologies semi-conductor manufacturing systems Recent Publications and Speaking Engagements “Law for ICOs and Blockchain,” Meetup at Alley, Cambridge, October 2017 Open Source Software Solutions (Part 3): Educating your Employees about Open Source Software Issues, Hamilton Brook Smith Reynolds, 2016 Open Source Software Solutions (Part 2): Understanding Open Source Software License Trigger Points and Resulting Obligations, Hamilton Brook Smith Reynolds, 2016 Open Source Software Solutions (Part 1): Getting to Know the Open Source Software in Your Products, Hamilton Brook Smith Reynolds, 2016 “Strategies for Commercial Software Developers Using Open Source Code in Proprietary Software,” Hamilton Brook Smith Reynolds Webcast, 2016 “Block Chain Revolution,” TEDx Berkshires, Stockbridge, MA, 2016 "Block Chain Innovations are Changing the Digital World," Hamilton Brook Smith Reynolds Webcast, 2016 TEDx Berkshires, Stockbridge, MA, November 2015 “Strategies for Maximizing Value of Intellectual Property,” 1Berkshire Entrepreneurial Meetup, Stockbridge, MA, 2015 "Strategies for Managing Open Source Software," Hamilton Brook Smith Reynolds Lecture, Cambridge, MA, 2015
- 6. Key Goals of Commercial Software Vendors Who Use OSS 6 G Maintain ability to deliver Protect IP from devaluation Mitigate security vulnerabilities Control contributions to OSS community Avoid exposure to Copyright Trolls Use OSS to increase market share and interoperability through dual licensing
- 7. Trends In American Innovations Agriculture 7 Medicine
- 8. Trends In American Innovations Transportation 8 Electronics and Communications
- 9. Patents 25% Trademarks 25% Trade Secrets, 25% Copyrights 25% Business Models – Portfolio Trends 9 Patents Trademarks Trade Secrets Copyrights Patents Trademarks Copyrights Proprietary Licensing OSS Licensing Trade Secrets Traditional New Licensing
- 10. Trends In IP Enforcement 10 1960's-1980's 1990's-2000's 2010 + Patents Copyrights OSS Licensing
- 11. Example OSS Licenses More Restrictive (Copyleft) More Permissive (Copyright) GNU GPL Mozilla Apache MIT variant
- 12. Copyleft Software Distributed Outside the Company Must be Compliant Comply with all applicable licenses and obligations Provide OSS education and training Conduct due diligence to identify, track, and manage Copyleft code Check that each seller in your supply chain ensures compliance of its entire supply chain Make clearing an integral part of the software development process Utilize your in-house clearing resources Consider scanning software code for Copyleft code
- 13. 13 OSS/Proprietary Licensing and Patent Rights Open Source Software (OSS) License: Licensing mechanism in which an owner surrenders some IP rights, e.g. right to access, use, and modify distributed “source code” without obtaining explicit permission from the owner. Proprietary License: Retains intellectual property rights—usually copyright of the source code, and patent rights. Patent Rights: A patent gives its owner right to exclude others from making, using, and selling the claimed invention.
- 14. OSS Dual Licensing Dual licensing enables distribution of software to licensees under a proprietary model as well as an open source model, allowing the licensor to simultaneously leverage the advantages of both types of licenses. One well known example of dual licensing is Oracle’s MySQL database management system. 14
- 15. OSS Dual Licensing Example 15 Linux/OSS Community End Users OEM/Customer Integrated Circuit Firmware Software OSS Proprietary Patent Application
- 16. Proprietary/OSS Dual Licensing Artifex v. Hancom Case Study Artifex is owner of “Ghostscript”, which is dual GPLv2/Proprietary licensed Artifex sued Hancom alleging: Hancom incorporated GPLv2 version of Ghostscript into Hancom’s commercial software, and was not GPLv2 compliant GPLv2 requires Hancom to distribute the source of (i) Ghostscript and (ii) Hancom's commercial product; Hancom’s failure to distribute this source code breached Hancom’s GPLv2 license, triggering a termination of the license. 16
- 17. 17 Patents and OSS Copyleft OSS not a bar to patent protection If distributed source code implements a patented invention, then the “recipient” of distributed source code may automatically receive a limited license to the patented invention Patent conveyances via distributed OSS are severely curtailed Patent Rights and Open Source Licensing
- 18. 18 Patent Grants: Breadth Cont. Examples Broad Grant - GPLv3 requires distributors of modified versions to grant an explicit patent license for the whole program. Narrower Grant - Apache License 2.0 requires a patent license for the changes made by a distributor. If distributed source code implements a patented invention, then the “recipient” of distributed source code may automatically receive a limited license to the patented invention. Evaluating Patent Clauses in OSS Licenses
- 19. 19 Apache 2.0: “… each Contributor hereby grants to You a perpetual, worldwide, non- exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted.” GPLv3 states: “... When you distribute a covered work, you grant a patent license to the recipient, and to anyone that receives any version of the work, permitting, for any and all versions of the covered work…This patent license…covers all patent claims you control or have the right to sublicense, at the time you distribute the covered work or in the future, that would be infringed or violated by the covered work or any reasonably contemplated use of the covered work….” Example OSS Patent Grants
- 20. 20 Retaliation clauses retract the granted rights from anyone who initiates litigation. This allows the distributor to use their patents to defend against aggression. Example GPLv3 Retaliation Clause: If You institute patent litigation against any entity (including a cross-claim or counterclaim in a lawsuit) alleging that the Work or a Contribution incorporated within the Work constitutes direct or contributory patent infringement, then any patent licenses granted to You under this License for that Work shall terminate as of the date such litigation is filed. Example Apache 2.0 Retaliation Clause: …you may not impose a license fee, royalty, or other charge for exercise of rights granted under this License, and you may not initiate litigation (including a cross-claim or counterclaim in a lawsuit) alleging that any patent claim is infringed by making, using, selling, offering for sale, or importing the Program or any portion of it. Evaluating Patent Clauses in OSS Licenses
- 21. 21 Permission to use/redistribute the software arguably implies copyright/patent grants GPLv2 arguably includes a patent grant in stating that patent rights can be necessary for use/distribution and that distributors must pass on permission to use/modify/redistribute, thus forming an implicit patent grant that is quite clear BSD arguably contains implicit patent grant: Redistribution and use in source and binary forms, with or without modification, are permitted (...) OSS Implied Patent Grants
- 22. Examples of Patenting OSS Technologies Blockchain Patent Applications At least 390 applications related to blockchain technology filed in 2017 OSS Blockchains Ethereum - OSS Hyperledger – Apache 2.0 (patent grant) Bitcoin – MIT/OSS 22
- 23. 23 Potential Reasons to Patent: Secure competitive edge License the patent to others to produce a revenue stream Assert patent rights against redistributors who are non-compliant with copyleft terms Enforce patent rights as an offensive or defensive Dual license (proprietary and copyleft) Position your company for acquisition Why Patent An Invention That Is Going To Be Distributed Under An OSS License?
- 24. Essential Guidance for Releasing Software Before distributing your software product: Inventory your code/software in the product for clearance purposes Protect IP Devise licensing strategy Modify code to conform to licensing strategy Contact IP counsel to assist 24
- 25. Questions 25 Mary Lou Wakimura [email protected] 978.341.0036 X3214 Giovanna Fessenden [email protected] 978.341.0036 X3466