[License-discuss] Protection of Academic Medical Center Patent Portfolio via MGBopensource Proposed License

[Barksdale, Marvin]

Greetings All,
Sincere thanks for taking a moment to discuss a core issue at the center of an upcoming submission of a permissive open source  License developed at Mass General Brigham hospital system to support scientific and clinical research and development conducted within MGB, or a similarly situated Academic Medical Center.

The license (included in text below) was developed to align explicit institutional licensing policies of proprietary and open science / source licenses, adding needed clarity to the MIT license popular in this space which currently remains silent regarding issues the healthcare community believes to be critical including restrictions on: Protected Health Information / Personal Information,  Implied Warranties, Representations, Liability for Any Damages, and Endorsement / Mark Rights.

Most controversial (and the core focus of this thread) in the Academic Medical Center  space is the issue of patent rights, especially in the post COVID, cash strapped world of health care / research.  Mass General Brigham, for example, is a national leader in innovation, investing nearly $15 million per year to secure and maintain patent protection for the inventions of its staff.  Statistically, MGB has filed patent applications on roughly 50% of the disclosures it received during the past five years.   Thus, although AMC's are aligned on the concepts behind OSD : 6. No Discrimination Against Fields of Endeavor, 7. Distribution of License, and 9. License Must Not Restrict Other Software, their role as frequent defender of patent rights that provide valuable revenue that lowers the price of patient care, puts the issue of granting patent rights front and center in open source licensing.

Looking at the Apache 2.0 license's approach,  MGB's long time stance has been to restrict it's use across the system due to patent overreach and the litigious nature of some in the community.  MGB has historically taken issue with Apache and like licenses with express patent grants e.g.: "...Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted... "
"Patent claims that are necessarily infringed by their Contribution alone..." is a broad net, potentially expanding patent licenses to  patents not expressly transferred with the Open Source Work via broad patent claims, Doctrine of Equivalents, Reasonable Interchangeability, Inventions with high invention to replication ratios, and other methods with which courts commonly expand the limits of patent infringement. Thus this express language  causes a chilling effect on MGB and other like-minded patent portfolio owners who are exposed to creative interpretations of infringing Open Source code, that arguably may include implied licenses to other patented IP (not necessary for OS distribution of the work) that is part of MGB's portfolio.

The proposed MGB approach utilizes an implied "use" grant similar to BSD-3 but alters the Apache language to not include "any express or implied license to any invention, patentable subject matter, or patent, of any kind or nature, nor in any jurisdiction in the world that is not necessary to exploit the [use] rights granted in Section 2."   The thought is, if its necessary to exploit the patent rights to use the licensed works, Licensees possess the rights,  but this is a more appropriate standard than "if it infringes on a patent, you have rights to that patent."

Is this approach likely to be considered a violation of OSD 6,7 or 9?

Any discussion or thoughts here are much appreciated. Happy to answer any questions the group may have.

Marvin Barksdale






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__________________
Marvin Barksdale, JD

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