Introduction

The relationship between the patent system and software hasn’t always been clear. Software is a unique construction, incorporating both creative and functional aspects. While creative aspects of software are protected under copyright law, the functional aspects of software may be protectable via patent law.1 The interaction between patent law and open source licenses is the focus of this chapter.

A patent gives its owner the right to exclude others from making, using, and selling the claimed invention.2 In contrast, open source licenses grant broad rights to modify, compile, distribute, and use the software. Absent explicit treatment in the license, the patent-related right to exclude and the open-source-granted right to use are at least apparently in tension.

A number of open source licenses3 address this tension explicitly by including a patent grant in the text of the license. However, just seeing the word “patent” or not in an open source license is not enough to identify whether there is an effective grant of patent rights. For example, the Open Source Initiative has stated its view that all open source licenses implicitly include a patent grant, relying on the text of elements 1 and 7 of the open source definition.4 Further, even when there is an explicit patent grant, the scope of the patent grant may not be well-defined. Finally, the distribution of open source-licensed software may have implications for patent exhaustion.

This chapter presents materials related to four separate but related issues:

  1. Explicit licenses: Express language in open source licenses granting patent licenses;
  2. Implicit Licenses: The existence and scope of implied patent licenses in open source licenses;
  3. Express but Non-specific Licenses: Express grants in open source licenses that do not include the term “patent;” and
  4. Patent Exhaustion: The doctrine of patent exhaustion and its applicability to the distribution of open source software.

Statutory Law

Each area of intellectual property law reserves particular rights to the owner of the corresponding intellectual property. The exclusive rights granted under copyright law are different than the exclusive rights granted under patent law.

17 U.S.C. § 106 - Exclusive rights in copyrighted works

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

  1. to reproduce the copyrighted work in copies or phonorecords;
  2. to prepare derivative works based upon the copyrighted work;
  3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
  5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.