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From "Lawrence Rosen" <lro...@rosenlaw.com>
Subject RE: Proposal: Disclosure of patents by Apache projects
Date Tue, 02 Jun 2015 22:51:35 GMT
William Rowe asked:

> So let me ask what might be a blindingly obvious question. 

> A handful of awarded patents apply to a code base submitted

> to the ASF, licensed under the AL by the patent holder, patent

> rights are conveyed.

> 

> Do we note the specific patent numbers/titles?  If so, where? 

> README?  NOTICE?  PATENTS?

 

 

If I owned those patents or if I had a license to contribute them for an Apache aggregation,
I would want to list them in the NOTICE file. Here is how. It isn't onerous. 

 

When an Apache project purposely infringes an actual patent that we have a FOSS license to,
it would be polite to say something like:

 

     Patent 1,234,567.

 

 

35 U.S.C 287(a):

Patentees, and persons making, offering for sale, or selling within the United States any
patented article for or under them, or importing any patented article into the United States,
may give notice to the public that the same is patented, either by fixing thereon the word
“patent” or the abbreviation “pat.”, together with the number of the patent, or by
fixing thereon the word “patent” or the abbreviation “pat.” together with an address
of a posting on the Internet, accessible to the public without charge for accessing the address,
that associates the patented article with the number of the patent, or when, from the character
of the article, this can not be done, by fixing to it, or to the package wherein one or more
of them is contained, a label containing a like notice. In the event of failure so to mark,
no damages shall be recovered by the patentee in any action for infringement, except on proof
that the infringer was notified of the infringement and continued to infringe thereafter,
in which event damages may be recovered only for infringement occurring after such notice.
Filing of an action for infringement shall constitute such notice.

 

As you described the facts, certain patent claims are licensed to Apache under a FOSS license.
The effect of this §287 notice would be of concern primarily to someone creating a derivative
work of an ALv2 aggregate that infringed different patent claims, or who wanted to create
entirely his own version of that software from scratch. Then take notice.

 

More information about this patent in the NOTICE file would probably also be helpful. It is
only a non-warranted ALv2 opinion so call if a "BS patent" or "theory of relativity" if you
want.

 

/Larry 

 

Lawrence Rosen

"If this were legal advice it would have been accompanied by a bill."

 

 

From: William A Rowe Jr [mailto:wrowe@rowe-clan.net] 
Sent: Tuesday, June 2, 2015 2:44 PM
To: legal-discuss@apache.org
Subject: Re: Proposal: Disclosure of patents by Apache projects

 

On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fielding@gbiv.com <mailto:fielding@gbiv.com>
> wrote:

On May 31, 2015, at 3:20 PM, Lawrence Rosen <lrosen@rosenlaw.com <mailto:lrosen@rosenlaw.com>
> wrote:

 

[Responses to three board members in one email.  :-)  ]

 

Greg Stein wrote:

> Thus, to water out random claims of infringement from random developers, we must wait
until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants
to assert that, then I don't think we're qualified to make *any* judgement, including whether
it is important/relevant to provide notice.

 

Nobody is concerned about "random claims of infringement from random developers." Or rather,
"if you are concerned about such a claim, then say so in the NOTICE file. If not, move it
to the trash." Nothing more is required from ASF or its members and contributors. I would
ask only for open disclosure within Apache projects of patents that seem interesting to the
project PMC itself. 

 

There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant
patents come with no warranties from ASF. 

 

ALv2 covers our software products, not our disclosures. We are just as liable for our statements
as any human being, and any statement we might make is evidentiary for both us and our downstream
recipients.

 

So let me ask what might be a blindingly obvious question.  A handful of awarded patents apply
to a code base submitted to the ASF, licensed under the AL by the patent holder, patent rights
are conveyed.

 

Do we note the specific patent numbers/titles?  If so, where?  README?  NOTICE?  PATENTS?

 

 


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