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From "Lawrence Rosen" <lro...@rosenlaw.com>
Subject RE: [PROPOSAL] new license FAQs
Date Wed, 14 Jun 2006 16:18:33 GMT
Doug Cutting asked:

> Q. If my company owns patents, and contributes software that does not 
> implement those patents, is there any way that our patents might later 
> be implemented by another contributor and thus be subject to free
licensing?

 

Jeff Thompson answered:

A.  No.  The patents that are licensed include only those that are infringed
by the contributions by themselves or by the contributions in combination
with the remainder of the code in the project -- that is, the contributions
form part of the implementation of the patent and the remainder of the code
includes the rest of the implementation.  If the implementation of the
patent doesn't involve the contributions at all, the patent is not licensed
even if it is part of the same project.  

 

I don't think that's at all obvious from reading the contributor agreements.
Nor do I personally believe that any contributor should have to risk the
unexpected licensing of his patent claims because of someone else's
subsequent contributions. Shouldn't we make whatever position we take clear
and unambiguous in the agreement? 

 

/Larry

 

Lawrence Rosen

Rosenlaw & Einschlag, a technology law firm ( <http://www.rosenlaw.com>
www.rosenlaw.com)

Stanford University, Lecturer in Law

3001 King Ranch Road, Ukiah, CA 95482

707-485-1242  *  fax: 707-485-1243

Author of "Open Source Licensing: Software Freedom and 

                Intellectual Property Law" (Prentice Hall 2004)

  _____  

From: Jeffrey Thompson [mailto:jthom@us.ibm.com] 
Sent: Monday, June 12, 2006 8:26 AM
To: Doug Cutting
Cc: Legal Discuss
Subject: Re: [PROPOSAL] new license FAQs

 




Doug Cutting <cutting@apache.org> wrote on 06/09/2006 06:49:35 PM:

> Here are two proposed new license FAQs, based on recent discussions 
> here.  Do folks feel these express the intent of the ASF?
> 
> ---------------
> 
> Q. I'm paid to contribute to an Apache project.  Does my employer have 
> to file a CCLA with Apache?
> 
> A. No.  The CCLA lets employers give explicit permission to their 
> employees to contribute to Apache.  In many cases, employment 
> relationships (employment agreements, work-for-hire laws, etc.) would 
> prohibit employees from contributing to Apache.  The CCLA provides a 
> convenient way for employers to explicitly permit their employees to 
> contribute, protecting employees from possible misunderstandings with 
> their employers.
> 
> Employees are free to obtain permission from their employers by means 
> other than the CCLA if they choose.  Each committer must file an ICLA 
> with Apache, vouching that they indeed have permission to contribute 
> their work.
> 

CCLAs help clarify issues and bring certainty.  Certainty on legal issues is
a Good Thing(tm).  So, I think we should be a little more encouraging
regarding CCLAs.  While they aren't required, they really are highly
recommended.  At least, that's my view. 

> ---------------
> 
> Q. If my company owns patents, and contributes software that does not 
> implement those patents, is there any way that our patents might later 
> be implemented by another contributor and thus be subject to free
licensing?
> 
> A.  No.  Patents subject to free licensing are defined at the time of 
> contribution.  If your contribution completes an implementation of your 
> patent at the time of contribution, then your patent is subject to free 
> licensing (even if you acquire your patent later).  But if the 
> implementation of your patent is not complete until another party 
> subsequently contributes, that would not cause your patent to become 
> subject to free licensing.
> 

As I mentioned in other notes, I don't think that answer describes the
general consensus.  But, in any event, the question and answer don't match
up.  The question asks about a patent not implemented by the contribution.
The answer addresses patents that are partially implemented by the
contribution.  The answer to the question as posed would be more like: 

A.  No.  The patents that are licensed include only those that are infringed
by the contributions by themselves or by the contributions in combination
with the remainder of the code in the project -- that is, the contributions
form part of the implementation of the patent and the remainder of the code
includes the rest of the implementation.  If the implementation of the
patent doesn't involve the contributions at all, the patent is not licensed
even if it is part of the same project.   

My 2 cents. 

> ---------------
> 
> Doug
> 
Jeff 

Staff Counsel, IBM Corporation  (914)766-1757  (tie)8-826  (fax) -8160
(notes) jthom@ibmus  (internet) jthom@us.ibm.com (home) jeff@beff.net
(web) http://www.beff.net/ 


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