Ross Gardler wrote:
> There was considerable
> interest in the Apache licenses to further consistency among open source
> projects, but it could not be fully supported for universities because
> its patent license was considered too broad [...]
I was interested, of course, in this sentence in particular, so sought out
the paper to determine what those concerns were. Again citing [1]...
6.0 PATENTS AND THIRD-PARTY PATENT LICENSES
Discussion of how patents should be addressed in connection with collaborative
open source projects consumed about half of the Summit time.
The key issue was whether institutions can give a wide patent grant that
would cover all the patents they have an interest in - including patents
that may have arisen out of the work of individuals who are not contributors
to the open source project, or that may have arisen out of work
funded by third parties.
The belief among some institutions was that the commonly used Apache
form of contribution agreement required a patent license that was too
broad, because it did not take into account the possibility that a contributor
institution would have previous commitments to third parties to whom
the patent had already been licensed, or who may have funded or participated
in the relevant research. For some of the larger research universities,
simply determining the relevant patents and agreements can be a
daunting logistical task.
Two outputs of the Summit addressed these concerns: the ECL 2.0 outbound
license and the new form of institutional contribution agreement.
These revisions were designed to accommodate concerns about the
reach of the patent license provisions in the contributor agreement. The
patent license provision was modified so that no license would be granted
to patents developed by anyone other than the author of the contribution,
and also to recognize the possibility that there may be funding agreements
or other prior commitments that limit the institution’s flexibility to
grant a license.
While these licenses represent progress, they also reflect some policy
decisions by participating institutions that bear long-term thought. For
example, a license to patents that arise only out of the work of contributors
to the project does not cover patents that arise out of other work at
the university, reflecting a choice to protect the ability of individual inventors
at the university, and the ability of the university itself, to benefit from
the commercialization of the patent, where licensing these patents in connection
with community projects may be beneficial to the community as a
whole.
In reading this, of course, there is nothing 'unique' to Academia. Simply
substitute IBM, Sun, Microsoft or any other organization with a broad
patent portfolio and such decentralization that you are unlikely to meet
every inventor in the company who's patents your design might touch on.
So, jumping to the ASL [2]
3. Grant of Patent License. Subject to the terms and conditions of
this License, 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. 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.
"where such license applies only to those patent claims licensable
by such Contributor"
OK. What's licensable by Professor Ross (injecting you into the discussion
for a moment as one of the faculty). Do you have the legal right to grant
patents on other departments or research teams' efforts?
My gut instinct says, no, you don't, although I could be wrong. In any
case, looking at the first citation again, "because it did not take into
account the possibility that a contributor institution would have previous
commitments to third parties"
Really? Even given you have the right to offer the license, our mitigation
in the existing license cites "those patent claims licensable by such
Contributor". And so? If you had an exclusive license in place, your
grant of a license of your own organizations patent was *invalid* because
the original exclusive contract revoked your right to grant other parties
that patent license.
I'm just not seeing 1. how the work of academic institutions differ from
for profit corporations with large patent portfolios, and 2. how the
existing language doesn't protect the organization from shooting itself
in the foot (stepping on each other's feet? perhaps.)
Enlighten me :)
Bill
[1]
https://www.collabtools.org/access/content/group/b745fecc-1952-4939-804c-b72624b326ed/Licensing%20and%20Policy%20Summit%20for%20Software%20Sharing%20in%20Higher%20Education.html
[2] http://www.apache.org/licenses/LICENSE-2.0.txt
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