[IPOL discuss] software and patents : info from the Software Freedom Law Center

Nicolas Limare nicolas.limare at cmla.ens-cachan.fr
Mon Aug 1 10:24:25 CEST 2011

Debian[1] published last month a patent FAQ[2] prepared by thje
lawyers of the Software Freedom Law Center[3], with some informations
useful for IPOL and IPOL authors. It is written from the point of view
of a software distribution, a group distributing lots of source code
and compiled programs worlwide, something IPOL is de facto (with a
very different scale, of course). While being volunteer-driven, Debian
usually has very good legal information and benefits from the advice
of seasoned law experts. As usual, there is a USA bias here, but the
rest of the world is also discussed.

I copy hereafter the parts of this FAQ that seem interesting for
IPOL. I suggest you to read it, it's a fairly clear and complete
"Software Patent 101" introduction in 250 lines. The missing part here
is the exception for research purposes explained in my previous mail[4]
but not relevant the Debian project.



Background on Patents

What is a patent?

A patent is a state-granted monopoly granting an inventor exclusive
rights to make, sell, offer for sale, have made, or import the claimed
invention for the limited term of the patent. The patent holder may
then license, on an exclusive or non-exclusive basis, one or more of
the rights granted.

How does patent protection differ from copyright protection?

A copyright owner has the right to prevent others from making
unauthorized copies of the copyrighted program, but not from
independently creating a program with the same features. Independent
creation is therefore a complete defense to an allegation of copyright
infringement. In addition, fair use is a defense against copyright
infringement, or is a substantive limitation of copyright, in every
copyright system. Patent law lacks any fair use exemption, so
independent creation, use for research, or reverse engineering for
interoperation or educational purposes are not defenses against
allegations of patent infringement.

Is there a world-wide patent on anything?

At present, no world-wide patents exist. Outside the European Union,
where applications may be consolidated, patents generally must be
applied for in each country in which patent protection is sought.

Infringing a patent

What does it mean to infringe a patent?

Infringing a patent means practicing one or more of its claims without
license. If someone uses, makes, sells, has made, offers for sale, or
imports software that practices every element taught by a claim in a
patent, that patent is infringed by the software.

It is possible to be liable for infringement without directly
infringing. Contributing to or inducing infringement also give rise to
patent liability.

What is inducing infringement?

Inducing infringement means actively encouraging someone else to
infringe a patent. Liability requires proving that the party charged
intended to cause a third party to infringe. Additionally, the inducer
must either know the patent exists, or strongly suspect its existence
and make efforts not to know. If, for example, documentation is
written by someone with knowledge of a patent's claims, and that
documentation explains how to use the program in an infringing
fashion, the instructions might be held to induce infringement. Where
a community of volunteers maintains a software package, and associated
documentation, unless the volunteers who produce the documentation
know of the patent supposedly infringed, they cannot induce

What is contributory infringement?

Contributory infringement means providing material assistance to the
infringement of a patent. In the context of software, this would mean
providing non-infringing software that could be combined with other
software or hardware to produce an infringing system. Contributory
infringement also requires knowledge of the patent
infringed. Moreover, if the software has substantial non-infringing
uses, it is not contributory infringement to provide it, even if it is
subsequently used in an infringing combination.

What are the consequences of infringing a patent?

If a party is found to be infringing a patent, courts may order a stop
to the infringing conduct, the payment of damages for past
infringement, or both. In this document we use term patent liability
to encompass all of these consequences.

What is willful infringement?

Infringement is willful if the infringer knew of the patent, unless
the infringer had a good faith belief that the patent was invalid, or
that his conduct did not infringe. The patent holder must show all the
elements of willfulness, and in the US courts must do so at a higher
standard of proof, which is called clear and convincing evidence.

I had no prior knowledge of a patent, can I still be held liable?

Knowledge of a patent is not in general required if the party is
charged with direct infringement. To be found liable for inducing or
contributing to infringement, as we have said, knowledge of the patent
or specific efforts to avoid learning of the patent is required.

In practice, patent holders usually request those they believe
infringe to take licenses. If the party takes the license offered, the
holder gets royalties without suing for them. If the party declines
the license, the patent holder has put them on notice, and is
therefore in a position to claim intentional infringement, which
results in higher damages and the possibility of recovering attorney's
fees. It is likely but not certain that before any community-based
distribution is sued for patent infringement, it will receive at least
one letter demanding that a license be taken.

What if the infringement was accidental, inadvertent and

An unintentional or inadvertent infringement cannot be willful, as we
said above. Nor can one contribute to or induce an infringement
accidentally, as knowledge and intention are both required. But one
could be liable for direct infringement, without knowledge or
intention, by using or selling or making or having made infringing
software without more.

What are the defenses available in a patent infringement action?

First, there may be many defenses specific to the facts and
circumstances of a particular situation, and it is the lawyer's job to
spot and develop those defenses. Some defenses are or may be present
in most cases, and they include:

* Permission: You are not liable for infringement if you have permission
  to use the claims. Such permission could be explicit. An explicit
  permission is called a license. Permission can also be implicit: it
  can result from conduct or statements by the patent holder which
  appeared to constitute permission and on which you relied. (Lawyers
  call this estoppel.) It can also result from sheer inaction by the
  patent holder, who can effectively permit infringing conduct by going
  to sleep on its rights, which lawyers call laches.

* Non-Infringement: A non-infringement determination is a showing that
  none of the patent claims actually read on the software charged. In
  other words, the software does not actually implement every element of
  what is recited in any claim.

* Invalidity: If the patent is invalid, it cannot be
  infringed. Invalidity can be shown by proving that the subject matter
  of the patent is outside the scope of patent law. It can also be shown
  by demonstrating, under US law, that the patent is non-novel or
  obvious. Under patent law, in order for a patent to be valid, the
  claimed invention must have been useful, reducible to practice, novel,
  and non-obvious to a person having ordinary skill in the art at the
  time that the invention was made. An invalidity defense, therefore,
  shows that the patent failed to meet one of these requirements.

The patent risk to a community distribution

We are a FOSS distribution and we make money. Does that make us more
susceptible to a patent infringement suit?

Anyone making revenue is a more attractive target for a patent holder
to sue than someone who makes no money out of which damages could be
paid. A community distribution that has absolutely no revenue is not
an attractive target. But even if you make a few hundred thousand
dollars a year in sales, compared to a profit-making enterprise the
size of Microsoft, or even Red Hat, you are not worth the expenses of
litigation to a patent troll or other rational plaintiff.

I have heard that distributing source code is safer than distributing
object code. Is that true?

Yes. Distributing source code is probably safer than distributing
binaries, for a few reasons. First, source code, like the patent
disclosures themselves, teaches how the invention works, rather than
being the invention. If source code standing alone can infringe the
patent, it is difficult to understand how handing out photocopies of
the patent itself wouldn't infringe. Second, in the US, courts may
find source code to be speech, as we believe they should find, thus
making source code subject to First Amendment protection. We know
little about how the Supreme Court would harmonize the patent law with
First Amendment requirements. We at SFLC have written several briefs
in the Supreme Court addressing these issues, but the Court has never
reached or decided them. Furthermore, as mentioned above, liability
for patent infringement can be imposed where one enables or encourages
another to infringe a patent, but the requirements of knowledge and
intent are more strict in secondary liability situations. Because a
user must first compile the source code and install the software in
order to infringe, a court is less likely to hold the community liable
for inducing or contributing to the infringement.

As part of a community distribution project, who is most likely to get
sued for patent infringement?

This is a problem for the potential patent aggressor, more than for
the distribution. A community distribution comprised by volunteers,
without any hierarchical structure of employment or supervision,
cannot be sued by suing the head. If infringement requires intent and
knowledge or specific efforts not to know, as it does in cases of
inducing or contributing to infringement, the individual with such
intent and knowledge must probably be found and sued in his own
person. If people who write code and documentation don't read patents,
and the volunteers who develop code for a package do not maintain the
same package or a related package, the aggressor may find it difficult
to sue anybody at all.

The specifics of any given situation, however, will undoubtedly be
crucial. As with all other matters of the kind, if you believe a
patent is likely to be asserted against your distribution or its
volunteers, you should contact SFLC or another lawyer immediately.

Are you suggesting that it is better for developers and contributors
not to read patents? If yes, why?

Yes. Unfortunately, U.S. patent law creates disincentives for
searching through patents, even though one of the main justifications
given for the patent system is that the patent teaches the public how
to practice an invention that might otherwise be secret. Willful
infringement subjects the infringer to enhanced damages when they are
aware of the patent and intend to infringe, and reading patents
increases the probability that subsequent infringement will be found
to be willful. Moreover, we find that developers often assume that the
patents they discover are broader in scope than they actually are, and
thus such developers become overly or needlessly worried. If, despite
this, you do intend to conduct a patent search, you should seek legal
advice first.

I am outside the United States. Do I have anything to worry about?

Although most countries are members of the World Intellectual Property
Organization (WIPO) as well as signatories to the Patent Cooperation
Treaty (PCT), large corporations generally restrict their patent
acquisition activities to the Big Three: the US, EU, and Japan. This
is considered sufficient protection for most companies, although
companies are increasingly filing patent applications in China with
the hope that patent rights will eventually be adequately respected by
the government and business communities. In addition, large
multi-national corporations in other jurisdictions, such as Korea and
Canada, will usually file patent applications in their own countries
before filing patent applications internationally. In India, some
software has been patented despite the clear statutory declaration
that software per se is unpatentable. SFLC in India has begun
challenging such patents.

But regardless of where you work, software that infringes patents
cannot be imported into countries where those patents have issued,
which means that you must at least be concerned about the ability to
reach your intended users.

As always, consultation with a local lawyer is a good step if you have
any questions about your situation or liabilities.

Nicolas LIMARE - CMLA - ENS Cachan    http://www.cmla.ens-cachan.fr/~limare/
IPOL - image processing on line                          http://www.ipol.im/
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