license with patent grants appropriate for specifications?

[Lawrence Rosen]

The compromise I try to reach with patent owners in the context of industry
standards is that 
(1) patent owners may choose to limit the scope of their patent license
grants to compliant implementations, and 
(2) those patent licenses may not restrict anyone from creating and
distributing non-compliant implementations.

Point 2 is necessary so as to be consistent with open source freedom to
create derivative works. Point 1 recognizes that patent owners and standards
organizations are usually not interested in expressly granting broad patent
licenses for non-compliant implementations.

As to the specification copyright license, it is consistent with open source
principles if it grants you permission to create derivative works of the
specification. [Note that this is also consistent with the right of anybody
to create a derivative work of a published patent.] But anyone creating
non-compliant implementations of an industry standard should read the scope
of the patent license grants carefully to determine if additional patent
licenses will be necessary to make, use or sell those products. 

/Larry

P.S. I'm cross-posting this on the IETF IPR-WG list, because there is mutual
interest in both the open source licensing community and the IETF standards
community about how to license patents and copyrights for industry
standards.

Lawrence Rosen
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242  ●  fax: 707-485-1243
Author of “Open Source Licensing: Software Freedom 
               and Intellectual Property Law” (Prentice Hall 2004)
 
> -----Original Message-----
> From: Ian Jackson [mailto:ijackson at chiark.greenend.org.uk]
> Sent: Tuesday, January 11, 2005 3:41 AM
> To: Bob.Scheifler at Sun.COM
> Cc: license-discuss at opensource.org
> Subject: Re: license with patent grants appropriate for specifications?
> 
<snip>
> Note that it is not good enough, when approving a specification which
> involves patented techniques, for there to be a patent licence for
> implementations of the specification.
> 
> This is because the users (and other developers) of an Open Source
> program must be allowed to modify the program without fear of legal
> repercussions.  Permitting only those modifications where the program
> remains compliant with the spec is insufficient.
> 
> For the software to be Open Source, the patent licence must be
> sufficiently broad that all derivatives of the original work are
> covered; this usually means either a general royalty-free patent
> licence is needed, or a patent licence written so that it covers all
> software with the relevant copyright terms.
> 
> Ian.