License Discussion for the Broad Institute Public License (BIPL)

[Smith, McCoy]

Was there not a discussion several months ago expressing concerns and/or
objections to a proposed open source license having certain
non-reciprocal obligations?

This one would seem to have the same problem.  Initial developer
purports not to grant patent rights, whereas subsequent contributors
must. Would not MIT's concerns about its large portfolio also be a
problem for subsequent contributors that are large corporations with big
portfolios and many existing license agreements?  Yet they are required
to grant a patent license that initial developer does not.

Not sure if that's an OSD question but I believe it has been raised in
the past as an issue.

-----Original Message-----
From: Rory Pheiffer [mailto:rpp at MIT.EDU] 
Sent: Thursday, May 11, 2006 5:58 AM
To: 'Brendan Scott'
Cc: license-discuss at opensource.org; 'Karin Rivard'
Subject: RE: License Discussion for the Broad Institute Public License
(BIPL)

Hi Brendan,

Thank you for your inquiry.  I understand your concern and hope that I
can
clear this issue up some for you.

MIT owns patents for the sole purpose of encouraging commercial
development
of the technology through licensing.  The issue for MIT is one of
control
over enforcement of the patents.  MIT owns over 2000 patents in the US
alone
and many more worldwide.  Most of those patents are licensed to
companies or
are intended to be licensed to companies.

The issue for MIT is in the instance where MIT has exclusively licensed
patents that may cover software that we release under the Broad
Institute
Public License.  MIT would not knowingly choose to patent an algorithm
or
method implemented by open source software and then knowingly withhold
rights to that patent.  The issue is where claims in patents not
obviously
or easily identified as covering the software do, in fact, cover the
software.  MIT may or may not be able to control enforcement of those
patent
claims if they have been exclusively licensed to a company.  Because of
the
size of MIT's patent portfolio, it is impossible for MIT to review all
of
its patents, even in a cursory fashion to determine which likely cover
any
particular software.  Thus, we can not offer a broad-based license to
any
patent that is owned by MIT that covers the use of the software licensed
under the BIPL.  Whether or not granting the right to use the software
creates an implied patent license is still an open question of law and
not
one that we choose to address.

In the event, MIT files a patent to specifically cover a particular
piece of
software, MIT does offer licenses of that known patent with its software
licenses.  However, MIT is not willing to offer any representations or
warranties relating to these facts or situations because of potential
liability to MIT, which is a non-profit research and educational
institution
that provides significant research and educational resources to the
world
for free.

I hope this helps you understand why MIT found it necessary to create
the
BIPL and make sure that MIT was not granting rights to its patent
portfolio
blindly.

Rory



-----Original Message-----
From: Brendan Scott [mailto:lists at opensourcelaw.biz] 
Sent: Thursday, May 11, 2006 7:37 AM
To: Rory Pheiffer
Cc: license-discuss at opensource.org; 'Karin Rivard'; 'Jill P. Mesirov';
'Michael Reich'
Subject: Re: License Discussion for the Broad Institute Public License
(BIPL)

Rory Pheiffer wrote:
> Hello,
> 
>  
> 
> I am writing to begin a discussion about the license we (the
Massachusetts
> Institute of Technology or MIT for short) recently submitted to the
Open
> Source Initiative for approval as an OSI Certified license.  The title
of
> the license is the Broad (pronounced Brr-ode as opposed to Brr-awed)
> Institute Public License, or BIPL for short.  Below please find the
three
> sections which your group has asked me to address:
 
[] 

> The most significant reason why we could not use the MPL is because
MIT
> cannot agree to grant a license to any MIT-owned patent that may end
up
> being associated with the software.  This is because it is virtually
> impossible for MIT to know if any of its many professors, researchers,
> investigators, or students have, are, or will do work that gives rise
to a
> patent claim that covers use of its software under the BIPL.  MIT
cannot
> grant rights to these patent claims because the professors,
researchers,
> investigators, or students involved with the patent claim would not
have
an
> opportunity to make decisions regarding the licensing of these patent
claims
> if a blind patent grant was part of a license that we distribute
under.
The
> patent grant in the MPL is an encumbrance that MIT cannot agree to
give.



Maybe I am not understanding what you are concerned about, but...

The wording of the MPL aside, if MIT owns the patents, on what basis can
it
deny a licence over them?  That is, if use of the software necessarily
requires an exercise of the patent, and MIT grants a licence to use the
software, how can you maintain that there is no licence over the patent?


(and conversely, if MIT does not own the patents, why would the licence
be
of concern?)


[]


Brendan