What happens if an open-source app intentionally violates a software patent?
June 3, 2012 7:45 AM   Subscribe

Is it illegal to willfully recreate a patented software process in open-source software, and what would be the possible consequences?

After seeing this story about the augmented communication iPad app threatened by a software patent, my immediate thought was that for a certain sort of hacker, this would be sufficient to provoke the creation of a duplicate product that was free/open-source.

What's to stop them (in the USA)?
posted by Calibandage to Computers & Internet (10 answers total) 2 users marked this as a favorite
The open source software would presumably infringe on the patent. Patents and copyright licensing are separate parts of intellectual property law.

Patents themselves are a sort of open source system; the whole point of US patent law is to encourage inventors to disclose how they created their inventions. The patent disclosure itself is supposed to contain enough information (blueprints, descriptions, etc) that someone can understand how the invention works. In exchange for this disclosure the patent holder is granted a monopoly on the use of that invention. No one else can use that same invention without licensing the patent from the patent owner. It doesn't matter if the third party implementation is open source, public domain, whatever; if it infringes on the patent, it needs a license.

Many of us who write software feel the notion of "invention" as applied to software and algorithms doesn't work very well and that a lot of software is patented that shouldn't be. Also the "open source" aspect of patent filings is laughable these days, as patents are often written in deliberately obfuscated language so as to not disclose anything useful.
posted by Nelson at 7:59 AM on June 3, 2012 [2 favorites]

I think they could ask you to stop distributing the software.

This has always bothered me because I thought that one of the express purposes of patents was to make sure that the description of the process entered the literature, and when you publish open source software, you're describing the process. I've often wondered if a reasonable defense would be to put this into a document which says "this describes patent #XYZ", and let people copy and paste into their own code. In fact, you could build a system which scraped such descriptions into code...
posted by straw at 8:03 AM on June 3, 2012

FFmpeg is an open source collection of codecs, some of which may be covered by patents. Their page on the subject suggests that only people using ffmpeg in a commercial project would be affected. They also mention that as the creators/owners of the project they have only received on legal threat - from a former member in relation to their logo!
posted by JonB at 8:27 AM on June 3, 2012

The license of the source code has nothing to do with whether or not it infringes on patents. See the SCO/Linux or Java/Oracle/Google lawsuit fiascos.
posted by tylerkaraszewski at 8:38 AM on June 3, 2012 [1 favorite]

What's to stop them (in the USA)?

Suing you into next Tuesday. Patent litigation is expensive.

You are confusing software patents and software copyrights. But the result is likely the same: getting your butt sued off. Copyright, patent, whatever, unless you've got insurance or are a big corporation, you're gonna lose.
posted by valkyryn at 8:44 AM on June 3, 2012

Best answer: I am an IP attorney, but I am not your IP attorney. This is not legal advice. I assume you are asking purely hypothetically and are not planning or considering writing such a program. If you are, you should consult a competent attorney in your jurisdiction.

An open source program can infringe a patent just the same as a commercial one. There is no requirement that the infringement be for profit, since infringement may consist of making, using, selling, offering to sell, or importing the invention. 35 U.S.C. § 271. Infringement may be direct (i.e. the author making the software) or indirect (e.g. the author distributing it to others intending that they use it in an infringing manner).

What's more, by copying a program knowing that it likely infringes a patent, the open source author may be liable for willful patent infringement. That carries with it the possibility of treble damages and an award of attorney's fees and costs. 35 U.S.C. § 284.

Note, however, that creating the program completely unaware of the existence of the patent is only a defense to willful patent infringement, not a defense to patent infringement generally because patent infringement is a strict liability tort. There is no requirement of knowledge, intent, negligence, etc.

However, this is all theoretical. In practice, many open source projects likely infringe many patents, yet there have been essentially no cases of an open source project (as opposed to a for-profit open source software company such as Red Hat) being sued for patent infringement. There are many possible explanations for this. One is that open source projects typically have no assets, so there is nothing to be gained from a judgment. Another is that open source software licenses (and certainly the expectations of their users) make imposing a patent license on each download impossible, impractical, or pointless.

Another major reason is that patent infringement is territorial (e.g. U.S. patent law basically only covers acts within the US). Thus, if US-based developers were sued then the torch could be picked up in another country. The patentee could sue those developers but only if they had a patent in that country. This leads to a very expensive game of whack-a-mole: acquiring and maintaing patent protection all over the world costs a couple million dollars in government fees alone, not to mention attorney's fees. And filing all of those suits would cost a small fortune even if the developers didn't defend themselves at all. Suing end users would be even more expensive and equally fruitless in terms of the money to be had from a judgment.

Thus, there is not a particularly strong incentive for non-practicing entities (aka patent trolls) or practicing competitors to sue open source projects, their contributors, or end users.

In this regard patent law is very different from copyright. The large statutory damages available in copyright infringement cases make it at least semi-workable to sue end users for copyright infringement. By contrast, in non-willful patent cases the damages are limited to a reasonable royalty or lost profits, both of which are fairly minor for most software. For example, the license for MPEG-4 video is 25 cents per decoder after the first 50,000, which are free.
posted by jedicus at 8:44 AM on June 3, 2012 [16 favorites]

In the US, the patent system is part of the constitution (Article 1, Section 8). The purpose of the patent system is to encourage innovation by making inventions known to others so that they can enhance/extend/build on top of the invention. In return, the inventor has rights to the invention for a limited period of time (20 years from the filing date assuming maintenance fees are paid).

The alternative to patenting your invention is to keep it as a trade secret which allows the inventor sole use of the invention for an indefinite period of time. But, if the invention is independently discovered by a third party, no protection provided.

From my research on the internet, in most countries, the use must be commercial to be considered infringing. However, in the US, apparently non-commercial use can be considered infringing as well.

In the US, the remedies for patent infringement are:
1. The larger amount of a reasonable royalty or lost profits from the infringement.
2. If the infringement is willful, punitive damages of up to 3x actual damages.
3. Legal fees.
4. The infringing product may be pulled from the market.
posted by elmay at 8:50 AM on June 3, 2012

Is it illegal to willfully recreate a patented software process in open-source software...

Just to make clear: it's a tort, but it is not a crime. It isn't illegal, but it is actionable. You can't be prosecuted for it, but you can be sued for it.
posted by Chocolate Pickle at 9:26 AM on June 3, 2012 [2 favorites]

Let's not forget that if you choose the GPL, you will fail section 7 and therefore the GPL license is basically rendered invalid (the software may no longer be distributed).

You'll need to choose a different license, such as the MIT one, if you were thinking about trying this.
posted by shepd at 9:35 AM on June 3, 2012

Expanding slightly on what others have said, "clean room" software engineering, in which a development team rewrites software anew from a purely functional specification, can be a defense against copyright infringement claims. Broadly speaking, the functional parts of the software are not subject to copyright. (Don't get too excited, the "functional" stuff is actually pretty narrow, IIRC.)

However, if the functional specification implements a patented technique, then the software would still be open to a patent infringement claim.

My very limited understanding/guess is that while "clean room" engineering was done a while ago, in fields today in which there's a whole bunch of patents potentially covering many conceivable processes out there, "clean room" rewrites are less useful.

TINLA and it's been years since I've looked at this issue closely.
posted by QuantumMeruit at 11:00 AM on June 3, 2012

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