Issues between Open Source Software License and Patents: Insights on Google’s AI Patents [2]

Summary

It seems that Google is telling us not to worry about their patents by granting licenses of their principal AI patents. Is that really what they are saying though?

Open source software is a computer software released under an open source license. In brief, with these licences a copyright holder grants the right to use the software under certain conditions. Open source software overlaps conceptually with free software, and people commonly understand that these softwares can be used by anyone without limitation. But, is this common understanding correct? That is the question that we will address in this column and the following articles.

One way to protect software IP is by copyrights because computer software -particularly the source code- is considered a type of creative work. The copyright of open source software is granted in principle to the creator of the software -the programmer who wrote the code-, regardless of whether the copyright was registered with the relevant authorities such as the IP office or copyright committee.

Usually, open source licenses grant permission to a third party to use the software based on the copyright existing in the software. However, the copyright holder who developed the software does not explicitly reserve or give up all rights existing in the software. They still own their copyrights and stipulate terms of use in accordance with the principles of open source. Additionally, in a typical open source license -and the well-known GNU Public License (GPL) is a good example of this- there is a requirement for the user of the software to release the source code of any derivative works related to the software that is the object of the open source license.

Even though an open source license may allow users of a software to use the software freely, as long as they are in compliance with the terms of the open source licenses, it is important to consider all intellectual property rights associated with the software.

Usually, copyright is not the only type of intellectual property right protecting the software. Copyright and patent rights may coexist in one software. Unless the open source license mentions patent rights, the license is usually construed as only allowing a license for copyright. In other words, even if copyright infringement may be avoided by complying with the open source license, it still remains a risk of infringement of patent rights.

One of the oldest debates in the IP industry is whether software is eligible for patent protection. The US Supreme Court´s 2014 Alice Corp. vs. CLS Bank decision challenged the patent eligibility for software-related inventions, making it hard to obtain software patents at the USPTO (the United States Patent and Trademark Office). At that time, the court argued that the so-called Business Model patent application was an already existing business model operated by general computers. Following this case, the US Supreme Court was rather strict on accepting eligibility for computer software patents. Recently, however, the USPTO has become more lenient on accepting software patents if it enhances the performance of the computers. Therefore, considering the recent situation and regardless of one’s personal opinion about software patent eligibility, I think it is now safe to say that software is patentable.

Many early open source licenses neglected patents and didn’t mention them. The GPL license does not mention patents until version GPLv2. From an open source standpoint, the potential of patent rights to interfere with the ability to freely use software seems to contradict the principles of open source. To some, it seems unthinkable for a company that offers open source licenses to also own patents for the same software. However, as strange as it may sound, open source software does not solely exist as an open source software. For example, many companies that already hold patents over their software later decide to share their technology on an open source basis. As a result of this apparent dichotomy, many open source licenses these days include explicit clauses related to patents. Well-known examples are the Apache 2.0 and GPLv2 and GPLv3 licenses.

The Apache 2.0 License

Let's take a look at the patent clause of the Apache 2.0 license, which is used by TensorFlow:

“3. Grant of Patent License. Subject to the terms and conditions of this License, each Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted. If You institute patent litigation against any entity (including a cross-claim or counterclaim in a lawsuit) alleging that the Work or a Contribution incorporated within the Work constitutes direct or contributory patent infringement, then any patent licenses granted to You under this License for that Work shall terminate as of the date such litigation is filed.”

The intent of the patent clause in the Apache 2.0 license is clear. The patent clause expresses clearly that software users are also free to use the patents owned by the contributors of the open source software. It clarifies what users took for granted but previous open source licenses did not mention. However, it also strategically includes a retaliation clause, which revokes the license in case a software user themself raises a patent infringement claim against the open source software.

That is, it stipulates that software users have a license for patents related to the open source software, but the retaliation clause addresses the potential situation in which a software user claims that the open source software infringes their patents.

So does this mean that, under the Apache 2.0 license, there is no need to worry about the patents owned by Google, TensorFlow’s main contributor? Not quite. As the saying goes, the devil is in the detail, and I especially recommend a careful reading of the following passage:

“... where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted.”

This passage stipulates that a license is only granted for those patent claims that are both (1) licensable and (2) necessarily infringed when using the relevant open source software.

In other words, one should analyze the claims of principal deep learning Google’s patents and determine whether one has no choice but to infringe the claims when using TensorFlow.

It is never easy to determine the extent to which a patent can be used freely, and in the context of a new project like TensorFlow, this determination is even more difficult.

It would ease our mind if Google were to say: “You do not have to worry about our patents related to our open source software”. And apparently that this is what Google is telling us. Is that really what they are saying though?