Patents & ASF policy

[Ian Holsman <li...@holsman.net>]

The ASP.NET project has brought up an interesting question for me.

what happens if a ASF sponsored project (lets take jakarta for example) 
is the subject of a patent dispute say 2-3 years from inception.

and lets say that the patent is valid, enforcable, and the patent holder 
decides he wants to do something. 

what happens to jakarta then? 

what risk/options does the ASF have in this case?

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Re: Patents & ASF policy

["Roy T. Fielding" <fi...@gbiv.com>]

> what happens if a ASF sponsored project (lets take jakarta for example)
> is the subject of a patent dispute say 2-3 years from inception.

We either ask the patent owner for a license or wait until the patent
owner demands we have one, depending on the nature of the patent.

> and lets say that the patent is valid, enforcable, and the patent 
> holder
> decides he wants to do something.
>
> what happens to jakarta then?

Most likely, the project in question is placed on hold until the
matter is resolved.

> what risk/options does the ASF have in this case?

The ASF's only risk is that of willful infringement.  Basically,
if the ASF has been informed that a patent is applicable to ASF 
software,
the ASF is responsible for obtaining a license.  Failure to do so places
the ASF at risk of litigation for the owner's lost revenue, and the
ASF's users at risk if they are using our software to generate revenue.

Most companies reduce that risk by forbidding their own employees
from performing patent searches.  That prevents them from being
subject to any form of damages for use up until the time when the
patent owner formally notifies the company of a covered patent.
That is why it is generally a bad idea to look for patents that
might be applicable, and an even worse idea to inform the board
of your opinion of such applicability, at least until the patent
owner begins to publicly seek licensing from the ASF or its users.
Very few patents are ever enforced, aside from cross-licensing deals.

FYI, almost every aspect of computing is claimed by multiple US
patents.  The only saving grace is that patent claims are written
in such an obscure way that only a court can determine their
applicability. As a result, a substantive patent defense requires
millions of dollars in legal fees.  The ASF's ability to win such
a defense will largely depend on the nature of the patent and the
tactics used by the owner for licensing.  Patent owners, however,
are unlikely to target the ASF itself -- instead, they sue the
companies that redistribute ASF software as part of a larger,
revenue-generating product.  Therefore, our primary concern regarding
patents, on behalf of the ASF community, has been the prevention of
deliberate contribution of patented algorithms that the contributor
could later use to collect a fee from all of the users.

....Roy


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