Grant of Copyright and Patent Licenses

The CPL grants all the rights necessary for open source software:

...Each Contributor hereby grants Recipient a non-exclusive, worldwide, royalty-free copyright license to reproduce, prepare derivative works of, publicly display, publicly perform, distribute and sublicense the Contribution of such Contributor, if any, and such derivative works, in source code and object code form. ( CPL section 2[a].)

It also grants a patent license compatible with open source:

...Each Contributor hereby grants Recipient a non-exclusive, worldwide, royalty-free patent license under Licensed Patents to make, use, sell, offer to sell, import and otherwise transfer the Contribution of such Contributor, if any, in source code and object code form. ( CPL section 2[b].)

The patent license in the CPL is limited in much the same was as it is in the MPL. Both licenses exclude combinations of the licensed software with other software or hardware. The MPL's language is much more complicated, involving a positive statement and an exclusion. (See MPL sections 2.2[b] and 2.2[d].) The CPL states essentially the same limitation much more clearly in three sentences:

This patent license shall apply to the combination of the Contribution and the Program if, at the time the Contribution is added by the Contributor, such addition of the Contribution causes such combination to be covered by the Licensed Patents. The patent license shall not apply to any other combinations which include the Contribution. No hardware per se is licensed hereunder. ( CPL section 2[b].)

Its clarity of language is one of the main advantages of the CPL over the MPL. But this provision still isn't very clear, is it? Just what do such limited patent licenses really mean? For the CPL, I must first define three terms:

"Contribution" means ... changes to the Program, and ... additions to the Program. ( CPL section 1.)

"Licensed Patents" mean patent claims licensable by a Contributor which are necessarily infringed by the use or sale of its Contribution alone or when combined with the Program. ( CPL section 1.)

"Program" means the Contributions distributed in accord-ance with this Agreement. ( CPL section 1.)

Consider a Contributor who wants to add or change something in the Program . Assume that this new feature or function, the Contribution by itself, necessarily infringes the claims of one or more of Contributor 's patents. One would expect Contributor to license those patent claims or his or her Contribution could not be used. Those patent claims are Licensed Patents .

But Contributor intends something more. He or she wants to combine a Contribution with the Program as it was received. Assume that this combination ( Contribution-plus-Program) necessarily infringes the claims of one or more of the Contributor's patents. One would expect Contributor to license those patent claims also or the Contributor 's Contribution could not be used in combination with the Program as it was received. Those patent claims are also Licensed Patents .

The first Licensed Patents ”those relating to the Contribution alone ”are always licensed by the Contributor to make, use, and sell the Contribution .

The second Licensed Patents ”those relating to the Contribution-plus-Program ”are not licensed by the Contributor for use with Contribution-plus-Program unless, at the time the Contribution is added by the Contributor , the combination of the Contribution and the Program as it was received necessarily infringed.

This confusing provision has the interesting effect of excluding from the patent license, for example, a license to Contributor 's pending patent applications if they hadn't been issued at the time the Contribution was added. Such an exclusion would not be allowed for a patent license under the open source “compatible W3C patent policy described in Chapter 13.

The Licensed Patents are not licensed for any other combinations which include the Contribution . This means the following are not licensed:

• Combinations of the Contribution with software other than the Program .

• Combinations of the Contribution with later versions of the Program unless the Licensed Patents were necessary for the current version of the Program .

• Entirely new software that embodies any of the Licensed Patents , even if those new programs perform the same functions as the original Program or Contribution .

Those seem to be fairly broad limitations. When described this way, are they consistent with the open source principles in Chapter 1? Why would such limitations be needed?

To understand that one must view patents from the perspective of an international company with the largest patent portfolio in the world. IBM is prepared to license some of its patents for use in an open source Program . Other companies and individuals will also be Contributors , and they too may have patents to license. The CPL guarantees that IBM and all others will (in effect) cross-license necessary patent rights to make, use, and sell the Program including Contributions . The entire community, including IBM and the other Contributors , will benefit from enhanced versions of this open source software.

But what might IBM's competitors do with IBM's patent licenses? Will they find new applications for those patents outside of the Contribution ? Will those competitors combine Contributions with other software in new and different ways IBM never thought of before?

Is IBM prepared to license all those potential uses? No. IBM wants to limit its license to those specific uses and combinations that it contemplated at the time of its initial C ontribution .

The MPL and the CPL, and most of the other corporate licenses listed at www.opensource.org , contain this kind of restrictive patent license. A licensee creating derivative works from such software ”and remember, the Open Source Principles guarantee that freedom ”may not exceed the scope of the initial patent license. The freedom to create derivative works is not absolute.

This is true under any of the open source licenses in this book ”including those licenses with implied patent grants. In some situations, it may be necessary to return to the Contributor and request an additional patent license in order to make, use, sell or offer to sell, or import a derivative work. Any li-censee of open source software who intends to create and distribute derivative works should ensure that he or she has the necessary patent licenses to do so.

Patent licenses are particularly important for companies that make, use, or sell industry standard software. The importance of broad patent rights for such software is discussed in Chapter 13.