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Larry,<br>
Thank you for this. A few clarifications:<br><br>
At 11:46 AM 7/14/2006, Lawrence Rosen wrote:<br>
<blockquote type=cite class=cite cite="">
<font face="Times New Roman, Times">You have announced to everyone here
that MIT (probably) has patents that you won't license with your
software, and that the university or others may come after users if we
use your software. If you leave out a patent grant entirely, that will
make not only your license, but your software, very risky. I am aware of
no modern, large open source project that would accept your contributions
under such terms.</font></blockquote><br>
MIT has not announced that, on its own, it would pursue users of the open
source code in order to enforce patents against users of the open source
code. MIT's position is that we have not knowingly filed any
patents that cover the use of the software to be implemented under the
BIPL. However, MIT has over 2000 patents in its portfolio, many of
which have been licensed to third parties exclusively. Our
exclusive license enables the exclusive licensee to name MIT as a party
to an infringement lawsuit as the patent owner--this may only be done if
legally necessary in pursuing the infringer and only after discussion
(but not permission) from MIT. Because of wonderfully creative and
appropriate patent claim interpretations, it is possible that patents we
never anticipated covering use of the open source code could, in fact,
have claims that cover use of the open source code. Although MIT
would try to discourage infringement suits against open source users,
ultimately, we are bound by our contracts. MIT is unable to grant
the broad based background patent license because it may very well cause
MIT to, unknowingly, be in conflict with existing license grants.<br>
<blockquote type=cite class=cite cite="">
<font face="Times New Roman, Times"> <br>
I also want to point out that MIT's situation as a large, diverse
institution where no one person knows everything that others are
inventing, is not that unique. IBM, Sun, HP, Apple, etc., are also large
institutions, and they all have dealt with this problem in some fashion.
I also note that W3C, hosted at MIT and with close ties to the inventive
community at MIT, has also solved this problem in its patent policy, not
by ignoring patents, but by committing its members to license patents
when necessary to practice industry standards. <br>
</font></blockquote><br>
A university licensing program is significantly different than IBM, Sun,
HP etc. Corporations do not relinquish control over pursuing
infringers as part of their patent license agreements. MIT does
relinquish such control. You may choose to disagree with this MIT
position, but that is the position and that is the term that is in our
exclusive licenses. Thus, our hands are tied--we do not control our
exclusively licensed patents nor are we in a position to procure
extensive infringement or non-infringement opinions on our unlicensed
patents prior to licensing them. It simply is not practical nor
cost-effective for our Institution. Corporations retain control
over infringement suits and thus do not need to perform infringement
analyses on all of their patents.<br><br>
I recognize that other universities are willing to offer patent grants in
open source licenses despite granting to their exclusive licensees the
rights that MIT grants. This is an independent risk assessment and
policy decision made by each institution. MIT has made its
assessment and will not make the broad based patent grant.<br><br>
As to W3C, that is a very tricky issue. MIT has not subjected its
patent portfolio to the W3C patent policy. You may contact W3C
directly, perhaps Daniel Weitzner, for more information on how MIT
operates in light of the W3C patent policy.<br><br>
It would be unfortunate if MIT could never receive an OSI approved open
source license because of this issue, but I understand that OSI will
apply its standards as it sees fit. MIT can not change its Policy
for this one license.<br>
<blockquote type=cite class=cite cite="">
<font face="Times New Roman, Times"> <br>
As Russ Nelson suggested, maybe MIT can make a more valiant attempt to
solve this patent problem, rather than passing it on to users to deal
with in the absence of patent information that only MIT has at its
disposal. </font><br>
<font face="Times New Roman, Times">Other universities and their
technology licensing departments are trying to address this problem in a
more comprehensive way. Perhaps MIT can help us create a better solution
than a license that places risky software into the stream of
commerce.</font></blockquote><br>
Agreed. But solutions take time and policy changes. MIT's
current policy is the result of some past occurrences that were a problem
for us. To change it would mean the possibility of the past problem
reoccurring. The process for change is being looked into, but it
takes time.<br><br>
<font face="Times New Roman, Times">Karin<br>
<blockquote type=cite class=cite cite=""> <br>
/Larry Rosen<br>
<br>
</font><font size=2>Lawrence Rosen<br>
Rosenlaw & Einschlag, a technology law firm
(<a href="http://www.rosenlaw.com">www.rosenlaw.com</a>)<br>
Stanford University, Lecturer in Law<br>
3001 King Ranch Road, Ukiah, CA 95482<br>
707-485-1242 * fax: 707-485-1243<br>
Author of "Open Source Licensing: Software Freedom and <br>
Intellectual Property Law" (Prentice Hall 2004)<br>
<hr>
<div align="center"></font></div>
<font face="Tahoma" size=2><b>From:</b> Karin Rivard
[<a href="mailto:rivard@MIT.EDU" eudora="autourl">
mailto:rivard@MIT.EDU</a>] <br>
<b>Sent:</b> Friday, July 14, 2006 7:43 AM<br>
<b>To:</b> license-discuss@opensource.org<br>
<b>Cc:</b> Rory Pheiffer<br>
<b>Subject:</b> Re: For Approval: Broad Institute Public License
(BIPL)<br>
</font><font face="Times New Roman, Times"> <br>
Dear BIPL Discussion Group:<br><br>
I am writing on behalf of MIT. It's not clear to me if this is how
the process works, but the group has raised a few issues on which I would
like to comment.<br><br>
It appears from discussion that there are three concerns raised about the
BIPL license:<br><br>
1. MIT does not explicitly license MIT-owned patent rights that
might cover the open source software. <br>
2. The license isn't fair because the BIPL requires
"contributors" to license their patent rights that cover their
contributions, while MIT does not do the same. <br>
3. The license is unlikely to be "used."<br><br>
Here are my comments:<br><br>
1. The requirements for OSI certification do not include a
requirement that the originator of the software offer a license to
originator owned patents. As has been pointed out in the discussion
group, MIT's position on not offering a patent license in the BIPL
is consistent with the GPL, the BSD license, the MIT license, the
Educational Community License, and others.<br><br>
2. There is a lack of parity in treatment of the Originator of the
code and future contributors to the code. This is true. MIT
will not offer the patent license; however, the requirement on
contributors was an attempt to procure for users as many "freedom to
use" rights as possible. If this disparity in treatment is so
abhorrent to OSI, it is easily remedied. MIT will delete from the
BIPL all references to any patent grants from contributors. Thus
the BIPL will simply be another open source license that is silent on
patent rights.<br><br>
3. I do not understand the last comment from the list. The
software is what is used. The license is the mechanism by which the
software is used. If no one contributes to the development of the
software because they do not like the license terms, that is ok.
The fact remains that the software remains freely and openly available
for use by the public, which I thought was the goal. Further,
"use" or "usability" is not one of factors that is
stated as a requirement for OSI approval. <br><br>
General comment: MIT's BIPL license, as submitted, complies with
each and every factor listed on the OSI site for achieving
approval. Nevertheless, if the approval committee demands parity of
treatment among MIT and the contributors, MIT will delete all references
to patent licenses in the BIPL. If this remedy is acceptable to OSI
in order to achieve approval, please let me know and the change will be
made.<br><br>
Thank you.<br>
Karin Rivard<br><br>
</font><font face="Times New Roman, Times" size=2>
__________________________________________________<br>
Karin K. Rivard, Asst. Director and Counsel<br>
MIT Technology Licensing Office, Room NE25-230<br>
Five Cambridge Center, Kendall Square<br>
Cambridge, MA 02142<br>
Phone: (617) 253-6966; Fax: (617) 258-6790<br>
Email: rivard@mit.edu</font></blockquote>
<x-sigsep><p></x-sigsep>
__________________________________________________<br>
Karin K. Rivard, Asst. Director and Counsel<br>
MIT Technology Licensing Office, Room NE25-230<br>
Five Cambridge Center, Kendall Square<br>
Cambridge, MA 02142<br>
Phone: (617) 253-6966; Fax: (617) 258-6790<br>
Email: rivard@mit.edu<br>
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