ECL 2.0 and New Questions!

[David Woolley]

Tzeng, Nigel H. wrote:

> "Any patent license granted hereby with respect to contributions by an 
> individual employed by an institution or organization is limited to 
> patent claims where the individual that is the author of the Work is 
> also the inventor of the patent claims licensed, and where the 
> organization or institution has the right to grant such license under 
> applicable grant and research funding agreements."

Whether or not that technically complies with the OSD, my view is that 
such a licence is of no more value to the community than a look but do 
not touch proprietary licence.  Specifically, I think it would be wrong 
to use it for open source software if there were any doubt that the 
organisation had the right to grant the licence.

(I read the wording to mean agreements in relation to the work that 
produced the software.  See below for the US problem with retrspective 
patenting of independent inventions.)

> 
> 2) I wish to show that an open source contribution by one contributor in 
> our institution does not accidently convey IP that some other researcher 
> is inventing.  Given we have a year to file it may or may not be 
> possible to know what is or is not in the works if something is still 
> sitting in their research notebook and not yet disclosed to the legal 
> office.

That year of grace is, I believe, a purely US phenomenum.  I believe, 
but haven't verified, that once the knowledge comes into the public 
domain the in UK, a UK patent is frustrated.

If there is a risk that the management might try to retrospectively 
patent something that was independently invented elsewhere in the 
organisation, that possibility should be explicit in the licence or 
pre-amble, not obscured in the words quoted from the ECL.  Then people 
can avoid using software which has not been publicly available under the 
same licence for at least a year.

A better position would be release under a look but do not touch licence 
for a year, then convert to an open source one with patent grants once 
the risk of retrospective patents was over.

Basically, people don't like open source licences that are not 
perpetual, and they don't like them when there is an alternative means 
of demanding an effective royalty.  Whilst one has to accept that a 
third party invention can result in a third party having to be paid 
royalties when one didn't know this originally, having to pay royalties 
to the first party is something I think most open source users would not 
approve of.

Incidentally, does the year of grace start from first publication, or 
from invention.  If first publication, I would have thought that the 
equitable thing to do was to consider the open source version to be a 
true independent invention, and therefore to have first claim on the 
patent.  If it is from invention, one would need to make an honest 
assessment of whether the open source use was invented before the 
conflicting internal invention, and not equate first publication to 
invention in order to give the later invention the chance to be patented 
based on actual time of invention.

If the invention isn't truly independent, then the organisation can't 
really claim they didn't know of the conflict.

-- 
David Woolley
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