Beware Open Source Strings Attached if You Want a Patent

  1. admin14
  2. June 1, 2017 3:48 am

Just this week I had the opportunity to consult with a client that is in the process of creating unique software that is, at least in my opinion, patentable over the prior art.  We were chatting over the telephone when he explained that the developer he hired was using certain open source code to supplement the original code being written.  Not wanting to scare my client needlessly, but suspecting the worst, I asked him to send me information on what was being taken, in particular the license agreements that govern the allegedly free open source software.  In life there are few certainties.  Death and taxes are among them; as is the fact that if you are taking open source software for your proprietary project you are likely about to do a deal with the devil that might be extremely difficult, or even impossible, to undo.

Software is unique because it can be protected by both copyrights and patents.  Copyrights in software protect the unique expression in the code, while patents protect new and nonobvious functionality.  So you copyright the code and you patent the function.  Patents are far more valuable for that reason given that a patent would protect the implementation regardless of how the code is written or what languages are used.  Thus, anything that potentially compromises patent rights should be avoided at all costs.

Copyrights in software are of extremely limited use.  Despite what open source advocates and anti-patent avengers say, a copyright in software is hardly enough to protect a unique innovation.  Simply stated, copyrights are extremely limited, weak and but for the fact that they are extremely cheap are quite useless.  But given they are so cheap to obtain if you have anything that can be copyrighted, including software, you absolutely should obtain a copyright.

The cost of filing a copyright application is $45, and if you hire an attorney to do it for you the total cost is under $350 and that would include at least some consultation via telephone to explain what you are getting.  Like so many things in life, you essentially get what you pay for.  Even at $350 a copyright is still a good deal because you have the right to access the federal courts to stop infringers, you have the right to receive your attorneys fees if you are victorious in litigation and there are always those statutory damages that are available, which can add up to a nice sum even if there are no actual damages.  But make no mistake, a copyright in software is exceptionally limited because there are myriad of ways to write code to bring about a particular functionality.  A copyright in software covers but one of those myriad of ways to write the code, so if I write different code without copying yours I couldn’t possibly infringe your copyright.  Thus, a copyright in software largely only protects you from those who would cut and paste, not those who set out on their own to replicate what you are doing.

So why the lecture on copyrights?  The open source code that you or your developer is about to take for your proprietary project is likely to be copyrighted.  Whether it is federally registered or not, it is copyrighted the minute it is fixed in a tangible medium of expression.  It is the fact that this open source code is copyrighted that creates the problem.  With copyrights, like patents, the rights the rights can be divided up any way the owner sees fit.  So the owner can give all rights, some rights or no rights.  They can also give rights under certain conditions, which is almost universally what happens in the open source code situation.  Those strings attached are real, and will almost certainly render any hopes of having proprietary software nothing more than a faint and distant memory.

Here is an example of the type of limited copyright waiver you can expect from those offering their open source code for you to copy:

Permission is hereby granted, free of charge, to any person obtaining a copy of this software and associated documentation files (i.e., “Software”), without restriction, including without limitation the rights to use, copy, modify, merge, publish, distribute, sublicense, and/or sell copies of the Software, and to permit persons to whom the Software is furnished to do so themselves. The above copyright notice and this permission notice shall be included in all copies or substantial portions of the Software.

So in other words, if you take this code you must allow others to take what you have created and give them the right to copy, modify, merge, publish, distribute, sublicense and/or sell copies.  So if you were to take open source software subject to this license then anyone would be able to take your software, regardless of whether you have a patent on it.  See how taking open source code can absolutely destroy proprietary rights?  For crying out loud this open source license doesn’t have a sunset provision and will follow you forever!

But what if you were to take the open source code and then not include the copyright notice and not give others permission to copy, modify, distribute, etc.?  If you were to do that then you would be violating the terms of the copyright license you were provided and likely would be infringing the underlying copyright in the open source code you copied, which would create a whole host of new legal problems for you.  Thus, taking open source code really does approximate a deal with the devil, at least if you were hoping to capitalize on your unique creation by being the only one possessing the underlying intellectual property rights.

Some might say that they disagree with my interpretation of the open source copyright license above, and that is fine.  But now ask yourself this question — do you want to run the risk?  There is an old saying that law professors tell their students, and once upon a time when I was a law professor I told my students — you don’t want to ever have one of your cases wind up in a casebook.  Cases are put into casebooks because they deal with a unique issue that offers a teaching point, but that means lengthy litigation and likely an appeal, which means you pay your attorneys dearly to find out whether or not taking open source code via an ambiguous copyright license means that your patent rights are compromised.  Is that the type of risk you want to take as you start your business and try and attract investors?  I doubt it.

Patents in software do not protect the code, but rather are independent from the code.  You protect the functionality as defined via a process and/or system, which can be coded in many different ways.  So patent rights are extremely valuable for software because it doesn’t matter whether anyone actually copied your code by cutting and pasting, or whether they looked at your code for inspiration and created their own, or whether they didn’t know about your code or software whatsoever.  Patent infringements isn’t about fault or intent; patent infringement asks whether the invention defined is what the alleged infringer is doing regardless of the code  used to bring it about.  Patent infringement is about strict liability.

Patents are far more valuable for software than copyrights, but by taking open source code you might be compromising your patent rights.  Ironically, if you were to take open source code under a license similar to the one above you would not likely be able to assert any patent rights you obtain against one who actually literally copies or even cuts and pastes, but you could assert your patent rights against those who didn’t literally copy your code.  Of course, those who would cut and paste copy are the ones you would most like to prevent, but might not be able to if your software has open source code.

Those who are engaged in software development and had never considered the consequences of open source code winding up in their software need to act immediately to investigate what is going on with development because if experience teaches anything it is that those who code will seek to cut corners.  To some extent, who can blame them?  Why recreate the wheel?  You do recreate the wheel when you want proprietary rights because the inclusion of anything allegedly free is going to come with strings attached — I guarantee it!

Many times you will hire an independent contractor or engage the services of a developer through a company.  These developers are tasked with bringing into being your creation, and in many if not most cases they are going to want to not have to do all the coding from scratch.  Sometimes it will be because of your requirements to stay with in a budget, and sometimes it will be because of their own limitations or their desire to turn projects around extremely quickly to maximize profits.  Whatever the reason, many coders will seek out open source solutions to use, after all it doesn’t matter to them, particularly if you haven’t specified that they are not to use any open source code.  So they take knowing full well what they are taking comes with strings attached, but it lets them finish their project and get paid.

Whatever you do, if you have a proprietary invention and you are contemplating seeking a patent or otherwise want to keep  your rights for yourself you need to be proactive. NEVER ASSUME, and make sure that those working on the project know not to even seek out or look at open source code solutions.  You need to make sure that those who are coding, whether they are employees or independent contractor developers are not using open source software, and if they are that you know exactly what the license is that you will have agreed do when your software embodying copied code is implemented.  Failure to know what has gone into your software in terms of code can be a costly oversight, and one that you might not later be able to fix in any satisfying way.


Beware Open Source Strings Attached if You Want a Patent


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