[License-discuss] [Non-DoD Source] Re: patent rights and the OSD

Mon Mar 20 21:36:45 UTC 2017

Hi Nigel, you actually brought up a really good point, one that I didn't have a ready answer to.  I took it to ARL's lawyers, and we're putting together an answer, which I hope will be done by tomorrow.  If you haven't heard from me by Wednesday, ping me.

Thanks,
Cem Karan

> -----Original Message-----
> From: License-discuss [mailto:license-discuss-bounces at opensource.org] On Behalf Of Tzeng, Nigel H.
> Sent: Sunday, March 19, 2017 7:43 AM
> To: license-discuss at opensource.org; lrosen at rosenlaw.com
> Subject: Re: [License-discuss] [Non-DoD Source] Re: patent rights and the OSD
> 
> All active links contained in this email were disabled. Please verify the identity of the sender, and confirm the authenticity of all links
> contained within the message prior to copying and pasting the address to a Web browser.
> 
> 
> ________________________________
> 
> 
> 
> Cem,
> 
> Larry's advice (tongue in cheek or not) isn't the issue for FedGov or ARL policy. That I randomly picked an ARL patent that happens to
> illustrate the potential issue is simply lucky.
> 
> The issue is that someone in some other part of the government could have released an open source implementation with a patent grant
> of Dr Chen's patent and deprived him (and ARL) of financial reward for his work.
> 
> I'm sure there are some here who would simply shrug and say who cares...rent seeking is evil anyway...but the FedGov policies regarding
> rewarding innovation is one aspect of attracting and keeping inventors in the government as opposed to going to private industry.
> 
> ARL and the DoD has an even harder time than research universities when it comes to the left hand not knowing what the right hand is
> doing. IMHO explicit patent grants provided by ARL in open source releases should be limited to those generated by ARL itself unless ARL
> intends to insure it isn't giving away a patent created by an inventor in another branch of the federal government.
> 
> I say this over and over but while it is laudable for you to give away something you create to the world it is unethical for you to give away
> something someone else created to the world.
> 
> Broad patent grant language in FOSS licenses/policies risks exactly that for very large organizations and the cost to prevent that means it
> is far easier (and cheaper) to simply not open source.
> 
> I really implore you to revisit the ECL V2 patent language and the reasons they didn't feel that vanilla Apache 2.0 was suitable for them
> when you (and the ARL lawyers and your OTT) are helping evolve the ARL open source policy.
> 
> Nigel
> 
> Obligatory Disclaimer: speaking as an individual, the opinions expressed here are my own and no one else's, etc.
> 
> From: Karan, Cem F CIV USARMY RDECOM ARL (US) <cem.f.karan.civ at mail.mil < Caution-mailto:cem.f.karan.civ at mail.mil > >
> Date: Sunday, Mar 19, 2017, 6:42 AM
> To: lrosen at rosenlaw.com <lrosen at rosenlaw.com < Caution-mailto:lrosen at rosenlaw.com > >, license-discuss at opensource.org <license-
> discuss at opensource.org < Caution-mailto:license-discuss at opensource.org > >
> Subject: Re: [License-discuss] [Non-DoD Source] Re: patent rights and the OSD
> 
> I was out Thursday and Friday, but... see attached Federal Register notice regarding this particular patent.  I know that Larry was (mostly)
> pulling everyone's leg, but before anyone gets themselves into trouble, I figured I should put the warning out there.
> 
> I'm not a lawyer, as far as I know this doesn't count as an official warning, I'm not representing the US Government (or any other
> government) in this matter, etc., etc., etc.  I just personally don't want to see anyone spend time on something and then get burned in the
> end.  Please don't shoot (or flame) the messenger.
> 
> Thanks,
> Cem Karan
> 
> > -----Original Message-----
> > From: License-discuss
> > [Caution-mailto:license-discuss-bounces at opensource.org <
> > Caution-mailto:license-discuss-bounces at opensource.org > ] On Behalf Of
> > Lawrence Rosen
> > Sent: Wednesday, March 08, 2017 3:07 PM
> > To: license-discuss at opensource.org
> > Cc: Lawrence Rosen <lrosen at rosenlaw.com>
> > Subject: Re: [License-discuss] [Non-DoD Source] Re: patent rights and
> > the OSD
> >
> > All active links contained in this email were disabled. Please verify
> > the identity of the sender, and confirm the authenticity of all links contained within the message prior to copying and pasting the
> address to a Web browser.
> >
> >
> > ________________________________
> >
> >
> >
> >
> > Nigel Tzeng wrote:
> >
> > > Using US7460689B1 System and method of detecting, recognizing, and
> > > tracking moving targets as an example it could be useful to have
> > an open source copyright license to any USG developed MTI
> > implementation of US7460689B1 because the libraries and functions used to implement the patent could be reusable.
> >
> >
> >
> > Nigel, I am avoiding reading that patent because I have no time, but since you did read it I can ask you some questions:
> >
> >
> >
> > Is the patent already "reusable" for things other than "detecting,
> > recognizing, and tracking moving targets"? What is the relationship
> > between "libraries and functions used to implement the patent" and all those different uses of the patent claims than are disclosed in
> US7460689B1? Are those copyrighted "libraries and functions" themselves patented claims in US7460689B1?
> >
> >
> >
> > Without such a patent analysis – that no open source engineer is
> > required to undertake prior to an infringement notice from the patent
> > owner – I'm comfortable recommending that we implement such open
> > source software. The hell with random patents tossed out by Nigel
> > Tzeng to scare me. :-)
> >
> >
> >
> > /Larry
> >
> >
> >
> > "If this had been legal advice it would have been accompanied by a bill."
> >
> >
> >
> >
> >
> > -----Original Message-----
> > From: License-discuss [Caution-Caution-mailto:license-discuss-bounces at opensource.org] On Behalf Of Tzeng, Nigel H.
> > Sent: Wednesday, March 8, 2017 7:18 AM
> > To: license-discuss at opensource.org
> > Subject: Re: [License-discuss] [Non-DoD Source] Re: patent rights and
> > the OSD
> >
> >
> >
> > Cem,
> >
> >
> >
> > To give them a more concrete example (hopefully not a flawed one ☺) I skimmed ARLs patent portfolio.
> >
> >
> >
> > Using US7460689B1 System and method of detecting, recognizing, and
> > tracking moving targets as an example it could be useful to have an
> > open source copyright license to any USG developed MTI implementation
> > of US7460689B1 because the libraries and functions used to implement
> > the patent could be reusable.  While a lot of the basic functions may exist today in GDL or SciPy the underlying image processing, change
> map creation, math, etc may have been reusable outside of the context of US7460689B1 and of greater interest to the software
> community when most of those capabilities were only widely available in systems like Matlab or IDL.
> >
> >
> >
> > Even more so the software components required to interface with Army
> > systems that would have to be built around any operational MTI system.  Getting access to source code from another government
> agency/DoD program isn’t always as painless as one might expect.
> >
> >
> >
> > While these could be broken out and individually open sourced it is an
> > additional burden on the Army/DoD Program and it simply may not get
> > done.  It would be far easier for the program to open source the entire system with the note that US7460689B1 and others apply to
> these 4 subsystems and care must be applied to any reuse of those components.
> >
> >
> >
> > I’m also curious of their opinion on the impact of the policy to give
> > away all software patents to Executive Order 10096 and the intent that
> > individual government researchers have the opportunity to benefit from their inventions.  Is there reason that software inventors should
> have less financial opportunity than hardware inventors?
> >
> >
> >
> > What safeguards exist or will exist for the USG inventor that an
> > unrelated ARL or DoD project will not open source code that
> > unknowingly implements their patent and provide a free patent grant?
> > What happens to the entity that may have contracted for an exclusive patent license agreement for that patent through their
> technology transfer office? Will the office responsible for approving ARL open source releases with patent grants be able to review source
> code applicability to not just ARL patents but those from the NRL or DOE?
> >
> >
> >
> > There is a reason I favor the patent grant language in the Educational Community License v2.0 for GOSS and large research
> organizations.
> >
> >
> >
> > Regards,
> >
> >
> >
> > Nigel
> >
> >
> >
> > ObDis:  Not speaking for the lab.
> >
> >
> >
> > On 3/8/17, 9:36 AM, "License-discuss on behalf of Karan, Cem F CIV
> > USARMY RDECOM ARL (US)" <license-discuss- bounces at opensource.org on
> > behalf of cem.f.karan.civ at mail.mil <
> > Caution-Caution-mailto:license-discuss-
> > bounces at opensource.org%20on%20behalf%20of%20cem.f.karan.civ at mail.mil > > wrote:
> >
> >
> >
> >     I can pass it through ARL's lawyers, as well as pass it to the
> > code.gov
> >
> >     people.
> >
> >
> >
> >     Thanks,
> >
> >     Cem Karan
> >
> >
> >
> >     > -----Original Message-----
> >
> >     > From: License-discuss
> > [Caution-Caution-mailto:license-discuss-bounces at opensource.org <
> > Caution-Caution-mailto:license-discuss-
> > bounces at opensource.org > ] On
> >
> >     > Behalf Of Stephen Kellat
> >
> >     > Sent: Tuesday, March 07, 2017 10:41 PM
> >
> >     > To: license-discuss at opensource.org <
> > Caution-Caution-mailto:license-discuss at opensource.org >
> >
> >     > Subject: Re: [License-discuss] [Non-DoD Source] Re: patent
> > rights and the
> >
> >     > OSD
> >
> >     >
> >
> >     > All active links contained in this email were disabled.  Please
> > verify the
> >
> >     > identity of the sender, and confirm the authenticity of all
> > links
> >
> >     > contained within the message prior to copying and pasting the
> > address to a
> >
> >     > Web browser.
> >
> >    >
> >
> >     >
> >
> >     >
> >
> >     >
> >
> >     > ----
> >
> >     >
> >
> >     >
> >
> >     > On Mar 7, 2017, at 10:08 PM, Tzeng, Nigel H. <Nigel.Tzeng at jhuapl.edu < Caution-Caution-mailto:Nigel.Tzeng at jhuapl.edu > >
> wrote:
> >
> >     > >
> >
> >     > > You know the more I think about this, the disclaimer of patent
> > rights in
> >
> >     > > CC0 is probably best for GOSS because it avoids the attempt
> > for
> >
> >     > a one size fit all patent grant language among different
> > agencies with
> >
> >     > different policies and the complexity under which patent rights
> > are
> >
> >     > awarded to whom under the Bayh-Dole Act and Executive Order 10096.
> >
> >     > >
> >
> >     > > Employees of federal agencies, especially research oriented
> > ones, have
> >
> >     > > some financial interest and rights under 10096.
> >
> >     > >
> >
> >     > > Likewise non-profits and small businesses under Bayh-Dole.
> >
> >     > >
> >
> >     > > IMHO patent grant language in FOSS licenses provide a false
> > sense of
> >
> >     > > security.
> >
> >     > >
> >
> >     > > I would rather the government open source as much as possible
> > regardless
> >
> >     > > of patent rights as long as any known patents are disclosed.
> >
> >     > As seen in Ximpleware v Versata the patents typically only cover
> > a small
> >
> >     > portion of the overall system (VTD-XML). While it is relevant
> > from
> >
> >     > the perspective of being able to use the system as built it is
> > less relevant
> >
> >     > from a code reuse perspective.
> >
> >     > >
> >
> >     > > For large government systems significant software components
> > could often
> >
> >     > > be reused without the specific portions covered under
> >
> >     > patent.
> >
> >     > >
> >
> >     > > So just having a copyright license to the entire project would
> > provide
> >
> >     > > significant value to the community. There is code I wrote 30
> > years
> >
> >     > ago I'd love to get access to again even if I couldn't use the
> > rest of the
> >
> >     > system.
> >
> >     > >
> >
> >     > >
> >
> >     > > _______________________________________________
> >
> >     > > License-discuss mailing list
> >
> >     > > License-discuss at opensource.org <
> > Caution-Caution-mailto:License-discuss at opensource.org >
> >
> >     > >
> > Caution-Caution-Caution-https://lists.opensource.org/cgi-bin/mailman/l
> > istinfo/license-discuss
> >
> >     >
> >
> >     > After a less than fabulous day at work for IRS dealing with my
> > tiny corner
> >
> >     > of tax law as well as my accounts work, I am tempted after
> >
> >     > reading this.  Perhaps this could be used as well as the rest of
> > this thread
> >
> >     > as pre-decisional input to open a tight Inquiry in the Federal
> >
> >     > Register.  That's the first step we can take to move into
> > building a formal
> >
> >     > record for a body of law.  Alternatively getting something
> >
> >     > chartered under the Federal Advisory Committees Act might help
> > move this
> >
> >     > forward.
> >
> >     >
> >
> >     > I think the debate has dragged on a bit for more than a few
> > months.  Moving
> >
> >     > to where desirable federal policy/policies are adopted is
> >
> >     > probably doable.  Could we narrow this down to 3 or fewer
> > courses of action
> >
> >     > that might be explored by ARL counsel in an inquiry notice?
> >
> >     > Even if list participants are the only people that respond to a
> > notice in
> >
> >     > the Federal Register we're still building a useful record for
> > later use
> >
> >     > such as Federal Acquisition Rules changes, for example.
> >
> >     >
> >
> >     > Depending upon what shows up in the President's budget set to
> > drop Monday, I
> >
> >     > either will have a lot of time on my hands coming up or
> >
> >     > an ICTAP certificate plus lots of time on my hands.  I want to
> > see Federal
> >
> >     > OSS policy evolve.  We have laid the groundwork here but need
> >
> >     > to get it in the official record soon.
> >
> >     >
> >
> >     > Stephen Michael Kellat
> >
> >     > GS-0962-07/1
> >
> >     > These views are solely my own and not those of the US
> > Government.  Rank,
> >
> >     > position, grade, and bureau are cited for identification
> >
> >     > purposes only.
> >
> >     >
> >
> >     >
> >
> >     >
> >
> >     > _______________________________________________
> >
> >     > License-discuss mailing list
> >
> >     > License-discuss at opensource.org <
> > Caution-Caution-mailto:License-discuss at opensource.org >
> >
> >     >
> > Caution-Caution-Caution-https://lists.opensource.org/cgi-bin/mailman/l
> > istinfo/license-discuss
> >
> >
> >
> >
> >
> > _______________________________________________
> >
> > License-discuss mailing list
> >
> > License-discuss at opensource.org <
> > Caution-Caution-mailto:License-discuss at opensource.org >
> >
> > Caution-Caution-https://lists.opensource.org/cgi-bin/mailman/listinfo/
> > license-discuss < Caution-Caution-https://lists.opensource.org/cgi-
> > bin/mailman/listinfo/license-discuss >
> 

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