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From Jeffrey Thompson <jt...@us.ibm.com>
Subject Re: [PROPOSAL] new license FAQs
Date Mon, 12 Jun 2006 22:04:31 GMT
Doug Cutting <cutting@apache.org> wrote on 06/12/2006 12:53:46 PM:

> Jeffrey Thompson wrote:
> > Doug Cutting <cutting@apache.org> wrote on 06/09/2006 06:49:35 PM:
> >  > 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.
> 
> How would you suggest we make this answer more encouraging?  Should we 
> just add something like, "Companies are strongly encouraged to file 
> CCLAs for their contributing employees" to the answer?

Reword the last sentence to be "Each committer must file an ICLA with 
Apache, vouching that they indeed have permission to contribute their work 
and are strongly encouraged to get their employer to submit a CCLA to 
avoid any possible misunderstandings."

> 
> >  > 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.
> 
> I think the notion of a "partly implemented" patent is ill-defined.  A 
> patent is either implemented or it's not, no?  The intent of the 
> question is to cover the cases where the patent is neither implemented 
> by the contribution alone nor by the contribution in combination with 
> the project at the time of contribution.  I attempted to simplify that 
> mouthful.  Did I oversimplify?  Perhaps the question should be restated 
as:
> 
> Q: If my company owns patents, and contributes software to a project, 
> and, immediately after our contributions, the project does not implement 

> our patents, is there any way that our patents might later be 
> implemented by another contributor and thus be subject to free 
licensing?
> 
> Is that a better match to the answer above?
> 
> > 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. 
> 
> But that avoids the tricky question of patents that involve the 
> contribution but which are not implemented in the project until others 
> make subsequent contributions.  That's the case that's causing confusion 

> and that needs clarification.

Sorry that I didn't complete my thought.  My proposed Answer was to the 
question that was asked.  There would have had to be a new Question to 
address the "tricky question of patents" to which you refer.

So, there's at least 2 questions.  Your initial question

> 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, unless your contribution implements all or a portion of the 
patented invention, then the patent is not included in the patent license.

And another one that addresses your tricky question.

Q.  What if my company's contributions implement only part of the patented 
invention?  Would those patents be licensed?

A.  Possibly.  If the project doesn't implement the patented invention in 
total, then no, but if the combination of your company's contribution with 
the remainder of the project does implement the patented invention in 
total, then yes, that patent is covered by the patent license.  This is 
true whether or not the patented invention was implemented by the project 
at the time that the contribution was made or afterward.  As long as the 
implemention includes your company's contribution combined with other code 
from the project, that patent is covered by the patent license.

Jeff
> 
> Doug

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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