The W3C Patent License

The World Wide Web Consortium was the first software industry standards organization to confront directly the problem of patent licenses for open source software. In May 2003, following several years of internal debate among W3C members (including representatives from all the major software companies and open source organizations), W3C published its patent policy. The effort was characterized by W3C director Tim Burners-Lee as "the most thorough ... to date in defining a basic patent policy for standard-setting." (See www.w3.org .)

One of their major goals was to make W3C standards (what they call Recommendations ) fully compatible with open source software.

As a condition for participating on a specific W3C standard-setting working group, W3C member companies and their representatives undertake to disclose and/or license their patents relating to that working group to everyone under an open source compatible patent license. A member company can refuse to license its patents for a W3C standard. But if it fails to disclose the existence of those patents, or if it decides to issue licenses, it must license its patents under a license compatible with the W3C Patent Policy.

These are the requirements for such patent licenses:

With respect to a Recommendation developed under this policy, a W3C Royalty-Free license shall mean a non-assignable, non-sublicensable license to make, have made, use, sell, have sold, offer to sell, import, and distribute and dispose of implementations of the Recommendation that:

1. shall be available to all, worldwide, whether or not they are W3C Members;

2. shall extend to all Essential Claims owned or controlled by the licensor ;

3. may be limited to implementations of the Recommendation, and to what is required by the Recommendation;

4. may be conditioned on a grant of a reciprocal RF license (as defined in this policy) to all Essential Claims owned or controlled by the licensee. A reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all.

5. may not be conditioned on payment of royalties, fees or other consideration;

6. may be suspended with respect to any licensee when licensor is sued by licensee for infringement of claims essential to implement any W3C Recommendation;

7. may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee, but may include reasonable, customary terms relating to operation or maintenance of the license relationship such as the following: choice of law and dispute resolution;

8. shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the W3C Royalty-Free license as offered by the licensor.

   License term :

9. The RF license conforming to the requirements in this policy shall be made available by the licensor as long as the Recommendation is in effect. The term of such license shall be for the life of the patents in question, subject to the limitations of 5(10).

10. If the Recommendation is rescinded by W3C, then no new licenses need be granted but any licenses granted before the Recommendation was rescinded shall remain in effect. (See www.w3.org.)

Of particular importance, of course, are items 1, 5, and 7, which allow everyone to make, use, or sell standard open source software, and which prevent the imposition of patent license conditions that would restrict its creation or distribution. Such licenses are compatible with the Open Source Principles from Chapter 1.

The W3C Royalty-Free license is a model for open standards patent licenses that are compatible with open source. Other standards organizations are beginning to consider similar licensing models.

Not every requirement of the W3C Royalty-Free license policy is friendly to open source, however. For example, because such licenses are "non-assignable" and "non-sublicenseable," each licensee theoretically must obtain a license directly from the patent owner. In practice hardly anybody does, and because of the W3C member commitments to each other, nobody needs to fear that a royalty-free patent license wouldn't be available to anyone who actually wanted one.

Item 3 allows the imposition of a field of use restriction in a patent license. Everyone should recognize that in some situations this field of use restriction may limit the creation of certain types of derivative works. This is not a unique problem for the W3C patent license; remember that open source licenses such as the MPL and CPL also contain subtle but important field of use restrictions.

Item 6 allows the patent being licensed to be used for defensive purposes. Anyone who sues the patent owner for patent infringement risks having patent licenses to "this and other W3C specifications" suspended (or terminated ). Similar provisions in many open source licenses have already been discussed in this book. Open source licensors are allowed to use their intellectual property to defend against infringement lawsuits by others.