Insight on Patenting Open Source Software

Nowadays, many individual inventor(s) and small enterprises approach us with a query – whether their innovation in an open source software can be a subject matter for a patent. If yes, then how? Primarily, the inventors would like to understand how much of their contribution in the underlying software is protected, as much of the software is built on existing program code developed by the open source community. To answer the questions, I thought it is best to discuss in a post to provide details to the inventors in general. In this post, I intend to discuss only patents and not copyright.

As known, open-source software refers to a software for which the underlying programming code is made freely available for use, reading the code, changing it or developing further versions of the software, including adding amendments to it. Open source software is often used as a non-proprietary software, such as Android, Linux, Ubuntu, Mozilla, GNU, etc., in which different versions of the software is further distributed and licenced at no additional cost. In other words, open source software is made available to the general public with relaxed or no intellectual property restraints that would keep another person from customizing or building upon the source code to make use of the software for their particular use. On the other hand, proprietary software, such as iOS, Windows, MacAfee, maintains the exclusive rights in terms of copyright and/or patents. The exclusive rights allow the owners of the proprietary software to refuse access to the source code by third parties for the purpose of copying or modifying the software, or sometimes controlling the use of the source code.

As the open source software is freely available for to use, a user can obtain the software from multiple third party sources under the open source license. Further, the user can modify the software to distribute or sell the software for profit. In the process, if the user modifies the software to attain certain functionality in an application, then the open source license does not stop the user from obtaining patent protection on inventive aspects of his modification to the software. However, the uses to which patent rights can be put are reduced when software embodying the patented technology is distributed under the open source license.

Now that I mentioned patent rights are reduced, one may ask that a patent owner has the right to exclude others from making, using and selling his patented invention. That is true, but not when the patents are obtained for the inventions on open source software. This is because; the open source license such as Mozilla Public License, GNU General Public License (GPL), and the like forbids imposing any restriction whatsoever on the rights granted by the license to the recipients of the software. Therefore, the patent owner who distributes a software incorporating his patent can no longer assert that patent against people who distribute that package further or incorporate the package in their own product. In other words, the rights obtained from open source license restricts the patent owner to assert the patent rights later on. This means that a competitor will have freedom to incorporate that package in his own product without having to pay any royalty to the patent owner. Please keep in mind that the part of the package in the product will have to be made available under the open source license.

Having said that, the follow-up question would be- why would anyone want to obtain a patent on an invention that is going to be distributed under the open source license? Actually, there are many reasons to do so. I will list down couple of them.

First, the patent owner wishes to license the patent to others to produce a revenue stream.

Second, the patent owner wishes to assert his patent rights against redistributors who do not conform to the open source license terms.

Third, the patent owner wishes to use the patent rights as an offensive or defensive weapon against infringers who are not using the open source license. For instance, the patent owner can assert the patent rights against his competitor who sells a competing product that incorporates the invention using proprietary software.

Many companies have had the above reasons to patent open source software and further distribute them. For example, Sun and IBM have patented thousands of open source software patents, only to release them to the general public. Sun patented its open source software so that it could release the open source software under its own open source license.  IBM regularly patents its open source software to have patent rights to use as an offensive or defensive weapon against claims that it is infringing on someone else’s intellectual property rights. In recent times, Google is aggressively pursuing to patent many applications built on the Android platform and license them for free.

It should be apparent that an open source software user is clear of patent infringement claims from the (same) open source licensee. However, the chance that a particular open source software package infringes on a patent by a proprietary software owner is quite real. In such cases, the open source software user may utilize couple of options to protect themselves. First, the open source software user may defend himself from the allegations of patent infringement. Second, the open source software user may request the open source license community and use their pool of patents on the technology to defend themselves. If nothing works, the open source software user may have to take a patent license from the proprietary software owner.

Using open source software has various advantages and risks. Use of open source software reduces cost and development time, or avoids being dependent on a single source. In order to reduce the risks, the license conditions of all open source software should be carefully evaluated. Further, the open source software should be screened for patent risks before use and/or distribution.

Author, Chandrasekhar is Manager and Patent Agent at IP Astra

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