Open Source Licensing

In the U.S., copyright owners have exclusive rights to their works including the right to use, copy, modify, and distribute the copyrighted work. The Copyright Act extends these rights and protections to software source code and software creators may choose to then license their rights to users of the software. In choosing to license their software, creators retain their rights in the work but grant permission to others to use the work under certain terms and conditions.

Under traditional proprietary licenses, software creators can limit how others use their copyrighted software by means of end user license agreements that prohibit copying, modifying, or redistributing the software. The copyright to the software is further protected by only providing the user with the object code for the software which cannot be easily read or modified.

Alternatively, software owners can choose to make the source code available to users and allow them to freely use, copy, modify, and redistribute the software under open-source licenses. An open-source license thus gives the user both the ability and legal right to modify the software. However, software provided under an open-source license is still subject to copyright protection and failure to comply with the license terms can be grounds for legal claims of copyright infringement as well as breach of contract.

There are hundreds of open-source licenses and variants which generally fall under two broad categories: restrictive or permissive. Under both types of licenses, users are allowed to use, modify, and redistribute software but the licenses differ in how subsequent modifications, derivatives, or new programs are licensed. Under a restrictive license, also known as copyleft or reciprocal license, the derivative work must be licensed under the same open-source license as the original software meaning it must be offered to others to use, modify, and redistribute under the same terms. Conversely a permissive license allows derivative works to be licensed under a proprietary license.

Some of the most popular open-source licenses include:

MIT License https://opensource.org/licenses/MIT

  • Permissive
  • License to use, copy, modify, and distribute software
  • May distribute under different licenses and without source code
  • Must include copyright notice and license agreement

GNU General Public License (GPL) v3.0 https://www.gnu.org/licenses/gpl-3.0.html

  • Restrictive
  • License to use, copy, modify, and distribute software
  • Commercial, private, and patent use
  • Must disclose source and include license and copyright notice
  • Must make complete source code of licensed works and modifications available
  • Must distribute under same open-source license

Apache License v.2.0 https://www.apache.org/licenses/LICENSE-2.0

  • Permissive
  • License to use, copy, modify, and distribute software
  • Commercial, private, and patent use
  • May distribute under different licenses and without source code
  • Must include license and copyright notice

Creative Commons (CC) 3.0 https://creativecommons.org/licenses/by-nc/3.0/legalcode

  • Restrictive
  • Must attribute author as creator
  • Non-commercial use
  • License to copy and distribute
  • No derivatives

Patents Outside the United States

A United States patent is only valid within the United States and will not neccesarily allow you to sue infringers in another country. Most countries have their own patent system, and if you plan on operating internationally you need to consider international protection. While there are many different patent systems, the requirements are generally the same: your invention must be new, useful, and non-obvious. Some jurisdictions may even require you to seek patent protection prior to publicly disclosing an invention- which differs from United States law, wherein you have a period of time from public disclosure to apply.

One of the easiest ways to begin pursing international patent protection is through a Patent Cooperation Treaty (PCT) filing. The PCT allows you to file an international application with the World Intellectual Property Organization (WIPO). From WIPO, your application can be submitted to any of the member nations, which includes most major countries around the globe. This process is referred to as entering the national stage, and once you enter the national stage you must follow that nation’s requirements to obtain a national patent.

Unfortunately, the PCT application does not lead to an “international patent.” However, the PCT application serves as a global provisional application, and you have over two years from filing the PCT application to enter the national stage in as many countries as you wish to obtain protection in. A PCT application is often more efficient than trying to coordinate filing in multiple countries.

Prior Art and Patentability Searches

A basic requirement to obtain a patent on an invention is that it is new and non-obvious. These requirements involve looking at the prior art. Prior art is broadly described as everything that exists and is publicly available as of the date the patent application is filed.

Prior art may consist of documents, such as published patents or applications, research papers, journal articles, or conference presentations. However, documentary prior art does not have to be formal. An Internet posing or YouTube video could constitute prior art. Prior art also captures products offered for sale to the public.

Understanding what the prior art is helps evaluate whether your invention is likely to receive patent protection. This review is accomplished through a prior art search. You can also contact a patent professional who can perform a detailed search of the prior art and give you an opinion on patentability prior to investing the time and effort into pursuing patent protection.

Patent Profitability

A key choice in your intellectual property strategy is how you will use your intellectual property to increase the value of your business. If you choose to pursue patent protection, there are several methods to drive value with your patent(s).

If you plan to make and sell the invention yourself, then your strategy will likely include enforcement. Patents provide an exclusive right (for a limited period of time) to make, use, import, and sell the patented invention.  This means that you can sue other businesses who put infringing products on the market. This method protects a value stream from sales but carries the costs of identifying infringers and the cost of lawsuits to enforce your rights.

You may also choose to pursue a licensing model, where you grant others the right to use your patent in exchange for a royalty. A strong set of licensing arrangements can lead to greater revenue streams, but licenses should be carefully crafted to protect your rights and ensure you obtain a fair deal.

In some cases, a patent can be used as leverage to drive investment or acquisition of your business. Investors are likely to see a patent as a valuable business asset and may be encouraged to invest additional capital, allowing you to scale. Larger companies may also find your patent valuable enough to buy your business to expand their own operations.

A strong intellectual property strategy will optimize multiple uses of your patent to build value for your business. You should not just consider whether you can patent your invention, but also what you will do with a patent once it issues, to ensure that the costs and drawbacks associated with seeking patent protection are justified by the potential economic upside.

Patent Novelty and Non-Obviousness

Patents can only be issued for new and non-obvious inventions. While these requirements seem similar, they are two distinct tests. Each requirement requires the examiner to compare the claims in the patent application to the prior art. Prior art consists of anything that is publicly available, such as patents, research papers, or products on sale.

Novelty requires that your exact invention not already exist. A claim will be rejected for lacking novelty if the examiner finds a single piece of prior art that demonstrates each and every element of a claim in the patent application. If you can show that your invention is even slightly different than the cited prior art, then you can typically overcome a novelty rejection.

Non-obviousness is the most difficult hurdle in obtaining a patent. A patent will not be issued if a person skilled in the field would look at all the prior art related to the invention (and all the other knowledge in the world) and come up with the invention as an obvious combination of things that already exist. While this sounds like a challenging test, there are many ways around an obviousness rejection, such as demonstrating that the invention has unexpected characteristics.

When looking at novelty and non-obviousness, the important thing is demonstrating how your invention is different than what is already out in the world. You should focus on identifying the differences in your invention from the prior art that will result in you obtaining a patent.

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