IP Considerations for Releasing OSS (part 2 of 3)

Continued from IP Considerations for Releasing OSS Part 1

Patents.  Unlike copyrights which provide creators with exclusive rights to do certain activities, patents can be thought of as providing owners with the right to prevent others from doing certain things with the subject matter of their patents.  Examples according to the U.S. Patent Act, 35 U.S.C. § 154 include:

1. right to exclude others from making products embodying a patented invention
2. right to exclude others from using products embodying a patented invention
3. right to exclude others from selling or offering for sale products embodying a patented invention
4. right to exclude others from importing products embodying a patented invention

Since commercial exploitation of these rights is often the reason for investing in patent prosecution, entities should weigh the "cost" of OSS licensing which implicates such patents against other goals such as market disruption or advantage of quickly establishing a public industry standard.

Software published under an appropriate OSS license can still assert patent ownership, but the OSS license chosen should explicitly license any implicated patent rights to the OSS consumer as necessary for full software utilization.  Otherwise adoption will be severely limited.

Additionally, several OSS choices include what is sometimes called a "Patent Peace" provision.  Such a provision can take various forms but usually terminates a licensee's rights to the original work if the licensee initiates  a patent action against the licensor or often any licensee of the covered work.  The intended effect is to specifically deter over reaching by downstream consumers while also discouraging such litigation in the OSS community at large.

Next, trademark and trade secret considerations.

 Please see these sources for a more in-depth discussion of these topics.