First Publication Date: 8th November 2009
Software can be protected under both copyright and patent law. While copyright protection for software existed for a long time, patent protection for software evolved during the last decade. Copyright over software protects the literal and/or artistic elements of the software such as code and/or user interface. On the other hand, a patent over software protects functional elements of the software.
The concept of “Open Source Software” (OSS) evolved in response to proprietary software and restrictions under copyright protection. Owners of proprietary software exercised exclusivity and withheld source code under the copyright law. They released only object code or executable and used their rights under the copyright law to prevent users from accessing, distributing and modifying the source code. In response, the concept of Open Source Software evolved with the philosophy of providing freedom to access, modify and distribute source code without copyright restrictions.
The proponents of Open Source Software used the copyright law to further the goals of making the source code available through open source licenses. An author of an Open Source Software claims copyright protection over his software but grants a license over his copyright with certain conditions that ensure that the source code is made available to every one who receives the software. By giving a license over certain rights and making the source code available, the author of the software provides the freedom to use, distribute and modify software. Today, there are numerous Open Source Software and numerous licenses governing their use and distribution. As patent protection for software is a recent phenomenon, most Open Source Licenses were based only on copyright law and did not have patent provisions.
Patent Risks to Open Source Software developers and users can broadly be categorized into risks from the license and risks from third parties.
Risks from the License
A number of Open Source Softwares are governed by licenses, which do not have patent provisions. Such provisions generally include grant of patent license and clauses against patent assertion. These provisions protect developers and users of Open Source Software governed by the license from patent infringement actions. However, if such provisions are not present in a license, the developer or user of software governed by such a license would be under risk of patent infringement action by any person. Examples of licenses that do not have patent provisions are BSD license, Assurance Attribution license, Boost Software license and so on.
Risk from Third Parties
Open Source developers and users often assume that they are free from any risk from third parties while dealing with OSS. However, the increase in number of patent infringement actions against Open Source developers and users indicates that OSS is not free from liability to third parties. Any patent holder can file a patent infringement suit against an OSS developer or user if the OSS violates patent rights of the holder.
Though there are only few instances of patent infringement actions against OSS developers and users, the fact that such risks exist is a cause of serious concern. One of the recent cases that was filed against an OSS user is the case of Microsoft Vs. TomTom. In the case, Microsoft filed a patent infringement suit against TomTom alleging that TomTom’s implementation of Linux violates eight (8) patents held by Microsoft. In response, TomTom counter-sued Microsoft for violation of some of its patents. The parties recently settled the suit with a settlement agreement for five years. As per the agreement, Microsoft will not initiate infringement action against TomTom or its customers for the next five years. TomTom’s obligations under GPL may be met and it will pay Microsoft an undisclosed royalty;
Another patent infringement action was filed by Firestar against RedHat, which was also settled. Furthermore, patent suits were initiated by Network Appliances and other companies against OSS users. The initiation of patent suits have prompted the OSS community to take various steps in order to address the risks. Such steps include, formation of open source patent depositories or pools, software patent revocations and so on.
OSS developers and users have to take necessary steps in order to mitigate patent risks. Patent due diligence has to be performed before using an Open Source Software. The software must be used only if it is free from patent risks. Patent analysis has to be included in OSS adoption or use models followed by companies.
Software Services companies that use OSS are under higher risk than earlier as a result of the increase in patent litigation against the OSS users. Care should be taken by such companies to avoid use of OSS without performing a freedom to use analysis. Burdensome indemnity and liability clauses must be avoided in agreements with customers.
Authors: Dr. Kalyan and Ms. Vintee