[License-review] Approval: BSD + Patent License

[Tzeng, Nigel H.]

McCoy, 

Thank you for the additional information/discussion.

If the intent is to provide am explicit license for all current and future
patents owned/controlled by the submitter that reads on the code that was
released is the addition of "already acquired or hereafter acquired² an
acceptable addition to your license text?

This would mean that answering when a patent begins is no longer
important.  As a layperson, I would have expected this is really only a
concern in the US because we have a grace period after 1st public
disclosure.  Therefore, on further thought, my scenario is not as likely
as you lose patentability in foreign countries because most countries
don¹t have that grace period. I guess it would still be useful when
patents are acquired at a later time.  We have seen very large patent
portfolios transferred between companies in the past.


Regards,

Nigel


On 1/21/16, 4:44 PM, "License-review on behalf of Smith, McCoy"
<license-review-bounces at opensource.org on behalf of mccoy.smith at intel.com>
wrote:

>This statement interests me:  "I believe the UPL patent grant *would*
>include a later granted patent from a licensor under the license, while
>the language of the BSD+PL would arguably *not* include it due to the
>instantaneous nature of the grant. "
>
>Neither UPL nor BSD + Patent defines the licensed patent claims as those
>"already acquired or hereafter acquired" (to borrow from GPLv3).  That
>sort of clarification of what patent claims are licensed is not a feature
>in most OSI licenses that include a patent grant (not Apache, not
>Eclipse, not GPLv2, and of course none of the licenses without express
>patent licenses).  GPLv3 does have it.  Lots of proprietary licenses do
>also.
>
>If we assume, for the sake of argument, that the absence of such language
>creates a license only to those patent claims in existence (Issued?
>Filed?  Reduced to practice?  Conceived?) at some snapshot of time (which
>I think you believe would be measured by "when the grant is made"), I'm
>curious what leads to that conclusion (and how UPL avoids it and
>BSD+Patent doesn't).  I think, perhaps the language " if, at the time the
>copyrighted material was added" in the combination grant of BSD+Patent is
>leading you to concluding that that sets the snapshot in time.  I tend to
>think that measures the scope of the grant, not the scope of the licensed
>patent claims.  I believe the only definition of the patent claims
>licensed are those " licensable by such copyright holder or contributor"
>(BSD+Patent) or "owned or freely licensable by each licensor " (UPL),
>which seem to me to be coextensive (putting aside the difference already
>discussed as to copyright holder/contributor vs.
>contribut[or]/provid[er]).  Perhaps there's something in the UPL grant
>that avoids a temporal limitation that I'm missing.  If it's the
>sublicense rights, I'm not sure how that would work.
>
>I'm of course talking about the express patent grant itself.  If the
>theory is based on implied patent licensing, I'm not certain how one
>could take the Transcore line of cases to that conclusion (I find the
>Transcore line of cases, considered together, quite murky on how one
>determines when, and of what scope, an implied patent license exists).
>
>I will note that I haven't really seen any case law that addresses this
>issue.  General Protech is sort of the reverse of that question (if
>there's an express disclaimer of later-issued patents, is there
>nevertheless a potential implied license).  If someone knows of precedent
>that might directly (or inferentially) lead to that conclusion, I'd be
>curious to see it.  It certainly would be relevant to measurement of the
>patent claims licensed in many of frequently-used OSI-approved licenses.
> Or at least proof that the authors of GPLv3 thought and addressed a
>corner case that prior license drafters did not.
>
>McCoy
>
>-----Original Message-----
>From: Jim Wright [mailto:jim.wright at oracle.com]
>Sent: Thursday, January 21, 2016 7:43 AM
>To: Smith, McCoy
>Cc: License submissions for OSI review
>Subject: Re: [License-review] Approval: BSD + Patent License
>
>Thank you for the thoughtful and detailed reply McCoy, a pleasure as
>always.  Sounds like you¹re going to propose a revision then?
>
>Assuming you end up tweaking not to exclude hardware components, and
>adding back conditioning of the patent license on attribution along with
>the copyright license, then to address the proliferation question, I
>think that might nail down a few substantive differences from the UPL
>(which, IMHO, is the core of non-proliferation evaluation - clear
>differences in effect of the license):
>
> - As you correctly observe in one of your other replies, the UPL
>includes a patent license from someone who redistributes under the
>license (though they may choose to sublicense under other terms to avoid
>this - it was a feature :), the BSD+PL will not include one, so in the
>base case, a recipient would still be relying on an implied license from
>any non-contributor for any use of the code.  This may also affect how
>distribution of combinations would likely be interpreted (in the A/B/X/Y
>example, under the UPL, a party distributing two pieces of code under the
>license would license both, while under the BSD+PL, they only license the
>code they¹ve contributed to and arguably not another piece of code
>distributed alongside, though one might at least try to counter-argue
>that this combination is itself a copyrightable contribution in some
>cases (collective work anyone? {Shudder}) then causing them to grant a
>license to the assembled whole.)
>
> - The UPL expressly permits sublicensing, the BSD+PL does not (and the
>extent to which sublicense rights may or may not be implied varies both
>by circumstance and by jurisdiction - one may not safely assume that
>sublicense rights to the code would be implied in all jurisdictions) such
>that under the BSD+PL you could not necessarily, e.g., cut and paste code
>into something licensed under terms that require the entirety of the work
>to be under a single license, or offer the work on proprietary terms, and
>purporting to do so could be infringing.
>
> - Getting to Nigel¹s most recent question, I believe the UPL patent
>grant *would* include a later granted patent from a licensor under the
>license, while the language of the BSD+PL would arguably *not* include it
>due to the instantaneous nature of the grant.
>
>There are other differences but I don¹t think we need a comprehensive
>list here.  
>
> Best,
>  Jim
>
>
>
>> On Jan 20, 2016, at 8:38 AM, Smith, McCoy <mccoy.smith at intel.com> wrote:
>> 
>> -- Hardware Per Se license exclusion:
>> 
>> You know, after your first comment (and some other public or private
>>comments I got), I'm thinking that maybe the exclusion of "hardware per
>>se" from the license may not be helpful, and perhaps harmful, for the
>>following reasons:
>> 
>> 1.  I have a feeling that it might render the license GPLv2
>>incompatible;  although OSI licenses are generally used for software,
>>they can be (and have been) used for hardware*, and to exclude out
>>hardware from the patent license could be considered an additional
>>restriction incompatible with GPL (either v2 or v3).  EPL and CPL both
>>have this exclusion, and the FSF does not point to that as rendering the
>>licenses incompatible with GPL, but that's likely because the weak
>>copyleft nature of these licenses was the primary reason for the opinion
>>that EPL & CPL are GPL compatible.
>> 
>> 2.  "Hardware per se" is, in my (and others') opinion, somewhat
>>ambiguous in its scope.
>> 
>> Nigel Tzeng suggested substituting a more general disclaimer (for
>>example " No other express or implied licenses are granted");  I can see
>>some merit to that as an alternative disclaimer.  I'm curious of the
>>mailing list's thoughts on this sort of disclaimer.  I know it is
>>something that is often put in proprietary licenses, although even those
>>sorts of disclaimer don't necessarily preclude an implied license being
>>found (at least in the US, per the Transcore decision and certain
>>progeny).  As to whether this disclaimer might impact GPLv2
>>compatibility, I think not (given the finding that the Clear BSD -- with
>>a complete disclaimer of all patent licenses -- is GPLv2 and GPLv3
>>compatible: http://www.gnu.org/licenses/license-list.en.html#clearbsd  )
>> 
>> --Irrevocability of patent license:
>> 
>> When importing that Apache/Eclipse patent license, I did take out the
>>clause that the grant was "Subject to the terms and conditions of this
>>License" (Apache)/" Subject to the terms of this Agreement" (Eclipse).
>>When I drafted it, I was thinking that the "Terms and Conditions" of BSD
>>are so minimal that making the grant conditioned upon them was not worth
>>it, and that patent litigation is a pretty expensive hammer to wield in
>>order to get someone to comply with the two conditions of BSD-2-Clause.
>>But then again, we do see some people failing to comply with those
>>minimal requirements, and they do provide a valuable notice function
>>that ought to be preserved (and to get the valuable benefit of a patent
>>license, you ought to at least comply with those requirements).  I'm
>>leaning toward maybe inserting a "subject to" clause to the patent grant
>>for this reason and to maintain better consistency with the
>>Apache/Eclipse patent grants.
>> 
>> --License from redistributor:
>> 
>> This really is a question as to the scope of how the Apache/Eclipse
>>style patent license is drafted;  I have of course reproduced (as best I
>>can) that form of license.  Those licenses are measured by the
>>contribution made by the patent holder (alone or in combination).  A
>>mere redistributor, who makes no changes/"Contribution", is not subject
>>to the grant of that form of license (at least I believe that to be the
>>interpretation -- anyone can correct me if they think I am wrong).  As
>>the Apache form of a patent license is the type that many patent holding
>>entities find an acceptable bargain (and which why many of them like
>>Apache, but for its GPLv2 incompatibility), I've retained that scope.
>> 
>> --Sublicense rights:
>> 
>> I've tried to track the language (and thinking behind) BSD and
>>Apache/Eclipse, which I believe is designed to be a direct license from
>>the copyright holder to everyone that uses the licensed subject matter,
>>thus precluding the need for a sublicense right (this is also the
>>thinking that was part of the drafting and discussion of GPLv3).  I'm
>>not aware of the argument that somehow the lack of sublicense rights in
>>BSD (or other licenses) might render it GPLv2 compatible, and I'm
>>curious as to how that would work given that the FSF has long maintained
>>that sublicense rights are not a part of GPL, and GPLv3 says, in Section
>>2, that "Sublicensing is not allowed" (because they believe it to be
>>unnecessary. 
>> 
>> 
>> *Those of you know me know I've been noodling  around with issues
>>around open hardware licensing for a while, and I have some skepticism
>>about the use of OSI licenses in their pure form for hardware licensing,
>>but that's beside the point of this particular license draft and OSI
>>approval. 
>> 
>> McCoy
>> -----Original Message-----
>> From: Jim Wright [mailto:jim.wright at oracle.com]
>> Sent: Friday, January 15, 2016 9:20 AM
>> To: License submissions for OSI review
>> Cc: Smith, McCoy; josh at postgresql.org
>> Subject: Re: [License-review] Approval: BSD + Patent License
>> 
>> McCoy, I applaud your efforts here.  A few questions in no particular
>>order:
>> 
>> - If a patent claim has some parts of a device or method in hardware
>>and some in software, is the intent of stating that hardware per se is
>>not licensed here that it not be covered?  (While some have concluded
>>CC0 is GPL compatible even with an express reservation of patent rights,
>>in my mind, the idea of expressly reserving some patent rights that may
>>actually cover the software as combined with HW on which it runs is
>>curious.)
>> 
>> - I note you make the patent license irrevocable - how do you intend
>>this to interact with the conditional nature of the copyright license?
>>The wording strikes me as interesting here, because you provide that
>>anyone exercising copyright rights under the license is the beneficiary
>>of an irrevocable patent license grant - but what if the party
>>exercising copyright rights is also breaching the license in another
>>context (e.g., providing attribution for one use but not another).  The
>>way I read it, the party is exercising copyright rights under the
>>license, and therefore all their activities benefit from the patent
>>license, potentially even if out of compliance in other contextsŠ?
>> 
>> - Vis-a-vis Carlo¹s question, and Richard¹s, I might go further - does
>>a recipient get, or not get, patent rights from a downstream
>>redistributor under the license, since a redistributor is arguably
>>neither a contributor nor a copyright holder here?
>> 
>> - This one will not be popular but some have actually questioned the
>>idea of the BSD license¹s GPL compatibility (vs., e.g., MIT).  Would it
>>be useful to add sublicense or other rights for certainty in this regard?
>> 
>> Oh, and Josh, McCoy can answer for this new proposed license, but as to
>>the UPL, we considered this, and I think we would take the position that
>>A is a licensor having provided the software under the UPL of X+Y, and
>>therefore has granted that patent license to ³anyone obtaining a copy
>>of² X+Y.  (We can discuss offline if you like in order to avoid bogging
>>down the discussion of McCoy¹s proposal.)
>> 
>> Best,
>>  Jim
>> 
>> 
>
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