The Competing Interests of Open Source and Patents, or Not?

Posted By: Aidan L. Clark

Copyleft_imageSome would say that open source software and protection of intellectual property rights, in the form of patents, could not exist in the same sphere. The idea behind open source software is to encourage innovation by the free exchange of code. The idea behind patenting software is to encourage innovation by granting the inventor a limited-in-time monopoly on their software. Both methods provide a way for the innovative technology to be introduced into the public domain. And with both methods, certain restrictions are placed on both the authors of the code, and those that wish to use it. Can open source software and patented software exists in the same sphere?

Open source software, as we know it today, is licensed under the General Public License, or the GPL. If you choose to license software under the General Public License, there are specific rules that need to be followed, namely: (1) Free Redistribution; (2) Available Source Code; (3) Derived Works Must Also Abide by the GPL; (4) Integrity of The Author’s Source Code Must Be Preserved; (5) No Discrimination Against Persons or Groups; (6) No Discrimination Against Fields of Endeavor; (7) License Applies to All to Whom the Program is Redistributed; (8) License Must Not be Specific to a Product; (9) License Must Not Restrict Other Software; and (10) License Must be Technology-Neutral.

Perhaps the most relevant requirement to our inquiry here is the requirement that derivative works must also abide by the GPL. Specifically, this means that any software that uses portions of the software licensed under the GPL, must also be distributed under the GPL, as open source software. For this reason, some commercial developers of software avoid using works distributed under the GPL, so that they can avoid being forced to release their software under the same license. But does the GPL preclude a distributor or author of code from obtaining a patent?

A patent gives the inventor, or patent holder, the right to exclude others from making, using or selling their invention. Using parts of GPL-licensed software in a derivative program do not prevent an inventor from seeking and obtaining a patent on their software. However, the “infection” property of GPL-licensed software—meaning that derivative works must also be released under the same GPL license—does limit the rights that an inventor can exercise with his patent. In the case of a patent existing in the same space as a GPL-licensed software program, the GPL license dictates that, while a patent can be obtained, the software must be licensed for free use for everyone.

However, the GPL license only requires that those using the GPL-licensed software are allowed to use it. If an author independently creates software, without using parts of the GPL-licensed software, then the “infection” property of the GPL license does not apply, and a patent holder may bar that author from making, using, or selling that software that infringes on their patent rights. In other words, there are limits to this “infection” property of the GPL license. Thus, open source software and patented software can essentially exist in the same space, in certain cases. It is also important to note that if an author develops software that uses the patented software, without using any portion of a GPL-licensed software, then that author could be in danger of infringing the patent.

Despite the important nature of these issues, there have been relatively few cases by which we can gather guidance from the courts. One such case appears to address the issues of the coexistence of a GPL license and a patent: XimpleWare v. Versata. The case was decided in November of 2014. Plaintiff, XimpleWare, asserted that Versata and their customers should be found liable for direct patent infringement, claiming that the Defendants had distributed their software product without complying with GPLv2. In the end, the Court dismissed the claims, basing their decision on the idea that patent infringement did not occur because the Defendants possessed a license under the GPL for internal use of the program. The Court said that an express license is a defense to patent infringement, and that the GPLv2 license constituted that express license that is required. Subsequently, the customers of Versata were covered under the same license, and thus were not liable themselves. It is important to note, however, that the Court ruled on the “usage” right of the software, and did not address anything touching on the issue of whether or not the GPL license gave the Defendants similar patent rights as the patent holder.

With such limited case law to rely on, it is obvious that the effects of mixing open source licenses and traditional intellectual property protection still remains to be seen. It is important to keep in mind that all avenues of intellectual property protection aim to promote growth and innovation in each field of inquiry, albeit by different methods and avenues of law. Making code and software “open source” is not the only way to add useful knowledge to the public domain. Each type of license or intellectual property protection has its place, and some can even coexist. The most important thing to ultimately remember is that it is vital to have some understanding of the current state of the law when deciding how to develop and distribute a product of software.

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