Updated November 3, 2020:

Can Patent Rights and Open Source Co-Exist?

Open Source patents are a method of combining traditional patents and Open Source licensing.

A patent is a legal method for the owner of an invention to control how others use their invention. In many cases, the software is released under what's known as an Open Source license, which is the idea that anyone should be able to view and modify the source code of a piece of software.

Under an Open Source license, the person that authored the software will release their source code so that it can be modified without the need to request the original author's permission. If a company releases software using an Open Source license, it can limit the ability of the software's author to assert their patent rights. However, the decision to use Open Source licensing should not prevent the software author from seeking a patent.

When businesses release Open Source software, it is also possible to grant patent licenses to the person who receives the software, and the original owner of the patent may have little to no control over who is granted a license.

Defining Open Source Licenses

The GNU Public License, also known as the GPL, is what most people mean when they refer to an Open Source license. The GPL builds on the traditional Open Source license by requiring the release of the source code of any piece of software that is built on another piece of Open Source software.

A GPL functions as a copyright license, and when a software author releases their product using a GPL, they are licensing whoever receives the software to use it as they see fit, whether that's copying, producing works based on the original software, or distributing the software. The licensee is able to create derivative software as long as they also release their source code. According to the GPL, any modification to the original source code of the Open Source software counts as derivative work.

Patent Rights of the Author or Modifier

If you release software using the GPL or other form of Open Source licensing, you are not prohibited from applying for patent protection. You can even apply for patent protection if you modify a piece of software released using the GPL. However, the protections that you receive will be significantly reduced than what you would get from a standard patent.

In the preamble of the GPL, it is claimed that free programs are threatened by software patents, and that stopping this threat requires that software users be licensed to use the software however they see fit. When a patent is granted, it is the law that the owner of the patent can limit the use of their invention. This indicates that if the software is released using the GPL, the author has relinquished their ability to assert their patent rights and that the original software can be modified by the end-user without the author being able to stop the modification.

Reasons Why Would Anyone Want to Obtain a Patent on an Invention that is going to be Distributed Under the GPL

There are several reasons that a software author may want to obtain a patent for software released using the GPL:

  1. The author may want to license their patent in order to generate revenue.
  2. The author may wish to retain the ability to bring litigation against users that don't follow the terms of the GPL.
  3. The author may want to assert their rights against infringers.
  4. The author may intend to release a version of the software that doesn't use the GPL.

What if the Original Author or Modifier is a Patent Licensee Under an Existing License?

In some cases, the author of GPL software has the ability to provide sublicenses, and the author might have the ability to include technology that has been patented in their GPL. The software cannot be distributed if the author has not been granted the ability to give sublicenses. Distributing software without sublicenses is expressly forbidden by the terms of the GPL.

If sublicensing would require that the licensee pay royalties, or if the author is not allowed to grant sublicenses, then it's not possible to include patented technology in the GPL. It's important to carefully review an author's ability to sublicense if the technology in their software is already subject to a licensing agreement.

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