How does the use of or contribution to open-source software impact your intellectual property rights? In this month's episode, we’re talking about software and the convoluted risk/reward interplay between patents, copyrights, and open source. Use of free open-source code can be an invaluable tool when building complex software applications. Why reinvent wheels? And depending on resources and budget, sometimes it’s the only practical way. But like with most things, free often isn’t really free. The cost is just transferred somewhere else. When it comes to open source, these short term savings can have significant long term consequences for your intellectual property rights. ⦿ Can you mix open source with commercial software and still keep your code private? ⦿ Can you patent your own software that uses open-source software? If so, could you ever actually assert those rights? ⦿ Can you patent open-source software you author and why would you? We'll discuss answers to these questions and more. Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, exploring: ⦿ The fundamentals of open-source licensing and how certain viral license types can require you to publicly make available your company’s source code. ⦿ How copyrights, patents, and open-source licenses differ in terms of software protection strategies. ⦿ And whether or not – and why you might – patent open-source software and the often proprietary code that leverages it, as well as the associated patent right assertion risks that can come with doing so. We look at concerns through the eyes of both users and authors of open source. And pragmatically as we can, highlight how it’s possible to construct a strategy where open-source innovation is encouraged without forgoing all future earning power and without blocking others from using it. Kristen has worked both as a Software Engineer and a Software Patent Agent for the last two decades. She has worked closely with software inventors from Big Tech Valley giants looking to utilize open-source software, while still maintaining their assertable patent portfolios. We couldn’t think of a better person to lead this conversation! Kristen is also joined today by our always exceptional group of IP experts including: ⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora ⦿ Dr. David Jackrel, President of Jackrel Consulting ⦿ Ty Davis, Patent Strategy Associate at Aurora Listen to the podcast: Learn more: https://www.aurorapatents.com/blog/open-source-and-patent-rights

1. Patently Strategic
Musings
KRISTEN HANSEN| February 28, 2023
Patents, Copyrights, and Open Source
This presentation is for information purposes only and does not constitute legal advice.

2. WELCOME! – Format
•10 Minutes Ice: Breaker
•15-20 Minutes: Problem Solving
•30-35 Minutes: New Material

3. Ice Breaker
•New people - introduce yourself
•What recipe/food is on repeat at
your house?

4. Shared Problem Solving
• Fun Strategy Tidbits?
• Any problems you are encountering
with the USPTO?
• Any practice issues arising?
• Any technical issues you are facing?

5. Overview
•Patents, Copyrights & Open Source
Differentiation
•How to protect Open Source Software (OSS)
•When you might want to patent something
you will open source

6. Software Protection Strategies
• Utility patents. – protect the functioning of software
• Design patents. – protect ornamental aspects/look of a
component, animations, and GUIs
• Trademarks. – protect slogans, brand names, logos, sounds
• Trade secret. – protect innovations that are not patent eligible,
not ready for patenting, or more valuable as a secret
• Copyright. – protect original works of authorship such as
software code and unique software code expressions

7. Software Protection Strategies (cont.)
• Open Source Software Licenses. Royalty-free, copyright
licenses granting 3rd parties the rights to copy, modify and
distribute software code
• Copyleft. OSS license requiring derivative works to distribute
using the same license terms as the open source code
• Can be highly insidious -- makes your software open source and
eliminates proprietary rights

8. Software Patents vs. Copyrights vs. Open Source
• Copyrights protect the expression (source code) of an
idea and guard against exact replication
• Patents protect the idea and functionality
implemented by the source code
• Open Source Software (OSS) licenses protect the
expression of an idea, but function as royalty free
copyright licenses.

9. Open Source Beginnings
• Circa 1980s - Open Source Concept: whatever you do
or make, give it away for free so others can build with
it and make it better
• PRO Argument Collaboration drives innovation
• CON Argument Competition drives innovation

10. Open Source Licenses
• OSLs comply with the Open Source Definition
• OSLs allow software to be freely used, modified, and shared
• OSLs must be approved by the Open Source Initiative (OSI) (i.e., a
license must go through the OSI’s license review process)

11. Open Source Licenses (cont.)
Many different flavors, but all follow this principal:
• OSLs do not bar a software author from obtaining patent protection nor do
most OSL’s bar a programmer from including their patented features when
they modify someone else’s software previously distributed under such
licenses
However: most of these licenses have clauses that state some version of:
“any patent obtained using this OSS content must be licensed for everyone’s free
use or not licensed at all”
Therefore: an author or modifier who distributes software under the OSS license
typically cannot assert his patent rights against subsequent users and
redistributors of the OSS licensed software
BUT REMEMBER: People who independently create non-OSS software are not
subject to this implied license when they do not use the OSS content

12. Open Source and Patents
• OSS can be and is patented for offensive, defensive,
altruistic, and commercial reasons
• a patent provides additional control over the software
and the underlying innovation - Using patents, it is
possible to construct a strategy whereby open-source
innovation is encouraged without irreversibly forgoing
all future possibility of earning a fair reward or
allowing others to unfairly benefit from your
innovation

13. Why patent software that
uses OSS code/content?
https://medium.com/novalto/why-patent-open-source-software-
b17ca6eb89d9
• the author can use
patent rights against a
competitor who sells a
competing product that
incorporates the
invention that is not a
derivative work of the
author’s original code
• typically, the OSL only
precludes the patent
holder from asserting his
rights against people who
are practicing the
invention by using the
OSL software

14. Why patent software that uses OSS code/content?
From the perspective of a user of the OSS content:
1) Patents are needed to defend open source software
2) Copyright/open source licenses are an ineffective way of
protecting software code
3) You may have code that is not based on OSS code base and
that code may have functionality that is patentable and not
subject to the OSL

15. Why patent software that uses OSS code?
From the perspective of an author of OSS content:
1) Author may plan to license the patent to others to generate
revenue
2) Author may plan to assert his patent rights against
redistributors who do not conform to the OSL terms
3) Author may plan to obtain patent rights to use as an offensive
or defensive weapon against infringers who are not using the
OSS software
4) Author may plan to also distribute a non-OSL version of the
software

16. Example
• You use OSS to build a search engine.
• You design and you code up (1) an algorithm that performs searches in the
search engine in a new way and (2) an algorithm for a new way to display
search results.
Search
Engine
coded
with OSS
New
Innovation (1)
New
Innovation (2)
Browser
Are either of your algorithms
patentable (if found new and
non-obvious) and to what
extent?

17. How can I protect myself when using OSS content?
Use software tools to find content and understand the open
source licensing of any OSS content you use:
• OSS monitoring and screening programs exist – use these tools to detect the
presence of OSS upstream components in your code, your employees’ code, your
contractor’s code, or any merged code that might include OSS content
• When considering software purchases and signing onto software licensing
agreements, it may also be important to have discussions with the licensor about
back-end OSS licensing and the availability of indemnification warranties for
potential open source breach claims

18. Key Takeaways
• When using OSS, understand the license implications
• Understand your rights by reading the fine print of
any OSL that applies to code that you plan to use in
your software
• Keep code for patentable inventions out of public
repositories
• Remember the OSS license implications apply to code
adopted by a contractor as well