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I have developed a process which I am in the process of patenting, and would like to release all or some of the implementation under an open source license (likely AGPL-3). I am trying to understand the relationship between patent protection and open-source licensing.

From my research/discussion with attorneys, it seems like much of the exclusive use protection of a patent is lost when releasing a codebase under an open-source license. This is fine. What is not clear to me, however, is whether the patent protection would prevent copycats from developing similar programs under totally different licenses, e.g. developing independent codebases using the patented process, potentially under a proprietary license.

I am comfortable with the code I release being used, and including a patent license, but I am not comfortable with others duplicating the process in their own (potentially proprietary) codebases. Am I correct in thinking that a patent + AGPL-3 would allow others to use my code under the same AGPL-3 license, but not to create separate programs under different licenses using the invention?

From my reading of the text of AGPL-3, it seems as though the license includes a patent license for all contributions made by the patent-holder, but not for additional work made by non-patent holders. In practice, that would mean that my contributions as patent-holder would be available for all to use, but others would be prevented from making contributions that infringe on the patented process. Can someone confirm that understanding?

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    Shall we assume that you are in the process of filing a patent application for a system and method, which you are planning to implement in software? And you want to offer your SW under AGPL license and at the same time offer the service under a commercial license to make money? And you want to prevent that 3rd parties copy your idea and do the same without having to pay you? A commercial model similar to the one of Bitwarden? Mar 16, 2023 at 17:03
  • Essentially, yes. Mar 16, 2023 at 17:24

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What is not clear to me, however, is whether the patent protection would prevent copycats from developing similar programs under totally different licenses, e.g. develop independent codebases using the patented process, potentially under a proprietary license.

When you have received a patent for your process, you have received the exclusive rights, within the jurisdiction(s) covered by the patent, to use and implement that process. One of the additional rights you get as well is the right to give permission to others to use the patented process (giving a license).

If you publish your software under a patent-aware open-source license, like the Apache or (L|A)GPL, then the copyright license also contains a patent license. This patent license gives people the right to use the infringing code that they received under one of those licenses. Granting a patent license in that way does not grant people the right to independently develop infringing code.

Am I correct in thinking that a patent + AGPL-3 would allow others to use my code under the same AGPL-3 license, but not to create separate programs under different licenses using the invention?

Yes. Due to the copyleft nature of the AGPL license, if you release your patented code under the AGPL, then any work created by others that infringes upon the patent must either be under the AGPL license, or it is a copyright or patent infringement that you can take legal action against.

From my read of the text of AGPL-3, it seems as though the license includes a patent license for all contributions made by the patent-holder, but not for additional work made by non-patent holders. In practice, that would mean that my contributions as patent-holder would be available for all to use, but others would be prevented from making contributions which infringe on the patented process.

Suppose the following situation:

  1. You hold a patent on your process
  2. You release, under the AGPL, a piece of software that is related to your patented process, but you leave out a key piece. In doing that, your software is not covered by the patent you hold. As the software is not covered by the patent, you don't (need to) grant a patent license.
  3. I create a contribution to your software that contains the key piece of your patent. As a result, the modified version that I created infringes upon the patent you hold.

As I don't hold the patent, I am not allowed to grant any patent license for the now infringing software.

As long as you don't include my contributions into your version of the software, you are also not required to give anyone a license to your patent and you can take legal action against me and those who received my version for patent infringement.

Only when you incorporate my contribution into your version, or if your code contained the infringing piece from the start, and you start distributing a version that infringes upon your patent are you required by the AGPL to grant a patent license.

The patent license that you grant as part of the AGPL must give the recipients at least the same rights as they would have under the AGPL license for code that is not encumbered by patents.

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    Your answer reads as if one patent would suffice to protect the invention of the OP, but this is not the case, as any patent is only valid in 1 (one) jurisdiction, and to have broader coverage you need to file applications in many jurisdictions, but still everyone is free to read the patent application(s) and to create their own implementation and run it and offer the services in a datacenter outside of these many jurisdictions without infringing on any patent. Mar 17, 2023 at 10:25
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Your advantage based on the AGPL license is, that you as the original author are free to also provide (closed source) licenses other than AGPL, which allow your potential customers to run services based on your software without having to disclose their source code. Others who use your AGPL-ed software (or its derivative works) are unable to offer this due to the copy-left features of AGPL.

Let's now look at the impact of patents.

The AGPL License in Section 11 states that every copyright holder (this includes you as the original author) is a 'contributor'

A "contributor" is a copyright holder who authorizes use under this License of the Program or a work on which the Program is based.

and that each contributor licenses their essential patents to all downstream users

Each contributor grants you a non-exclusive, worldwide, royalty-free patent license under the contributor's essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of its contributor version.

This means that all users of your AGPL-ed software, including downstream derivatives that you distribute, are licensed under your patents. But this obviously only is valid for your own code and its derivatives (including modifications contributed by others that would infringe your patents), the patent license is not valid for software with the same functionality that was independently developed from (not a derivative of) your code, a so-called clean room design. (see also here )

Once your patent application is allowed and a patent is granted you can enforce it and litigate against those that sell and/or use this independently developed software on the basis of patent infringement.

But you need to understand that a patent is only valid in one jurisdiction, there is no 'international patent'. So if you want patent protection in many jurisdictions you will have to file patent applications in all of them. And it is important to know that the patent applications themselves are basically in public domain, they don't have copyright in many jurisdictions. Therefor, by filing a patent application in a handful of jurisdiction you are publishing the 'recipe' of your 'secret sauce' in all jurisdictions free to use for everyone (only restricted if and when a patent is granted in that jurisdiction).

As a consequence, if you file your patent application for example at the USPTO, someone in Canada or Mexico might read the patent application and implement a new software based on it and offer it on servers located in their home country, and there is nothing you can do about it. If you then also file applications (based on your priority application) in Canada and Mexico, the other software provider might just move their servers to another country nearby, and there is nothing you can do about it.

Even if your process is really innovative you should not be too confident that your patent application will be allowed. In the last 10-15 years it has become more and more difficult to get software patents, in some jurisdictions it is almost impossible. You should therefore seek guidance from a seasoned patent attorney.

Summary:
Filing a patent application can be a double-sided sword. You can get some protection in some jurisdictions, but you are also opening up everything for copycats in jurisdictions where you have not filed a patent application, or where your patent applications have been rejected by the patent office.

You should carefully consider the trade-offs between relying on the protection AGPL gives you vs. the additional protections and risks gained by filing patent applications.

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Let's assume you will place the source code in a public git repository, say on GitHub.

According to the AGPLv3 license, you and anyone else contributing code to your software, would be copyright holders, who are also contributors. Anyone forking your public code repository and making changes to it (and making it public or accessible to software recipients), with proper attribution, would also be contributors.

All contributors would grant the downstream recipient (basically anyone accessing the GitHub repo and anyone receiving your software in any form) patent license(s), which is the right to use patent(s), owned by any or all the contributors, which is otherwise infringed without this patent license grant.

This means that someone like me, who has no connection to you or your project, would be able to fork your public GitHub repository, make changes to the source code as I like, and legally use your patented process together with this source code that is in my own forked GitHub repository. Of course, I would have to make the derived software either public or accessible to downstream recipients of my version of your software, according to the conditions of the AGPLv3 license.

So, in effect, I would be able to fork, use, modify and create my own software (and commercial product) out of your software and your patent, as well as the relevant patents of all other contributors, but all of the source code that I modify or generate (that is a part of the derived work), must remain accessible to the recipients of my software and product, according to the conditions of the AGPLv3 license.

What this means for you is that I can make a commercial product (owned completely by me) out of your patent and software, but you can take my changes back and incorporate it into your software and commercial product.

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    Your answer should mention that the OP's patent license only covers the functionality that is included in the OP's own code. OP's patent license does not cover the (potentially infringing) modifications you are adding within your own fork. And you should mention that the OP's option to dual-license the code is obviously not available to you and your fork. Mar 17, 2023 at 10:44
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Citing the relevant portions of the AGPL for reference:

A contributor's "essential patent claims" are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version. For purposes of this definition, "control" includes the right to grant patent sublicenses in a manner consistent with the requirements of this License.

This might be a reason to ask your attorney to make some dependent claims that would not be infringed by your program as is. Your attorney will know what that means.

Each contributor grants you a non-exclusive, worldwide, royalty-free patent license under the contributor's essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of its contributor version.

So the contents of your contributor versions are covered by the license. Anybody who wants to take that can modify it freely without worrying about the claims that were already licensed, but they don't get permission to modify it to cover a new claim.

You might ask, "what if they take my program, delete all but one of the files, change that file, and then write a whole new program around it -- then do they have a patent license?" Or, better yet, you might be asking, "what's the line between modifying my program and making a whole new program?" And that kind of confusion is why people pay lawyers money.

But, at least in that case, they're admitting that they modified an AGPL-licensed work, so they'll be bound by the AGPL, which... might be good enough for you.

There might be some fear that you sue somebody, and then they go and they download your AGPL code and try to get a patent license out of it to help them in negotiations.

You can always sue anybody, the question is whether or not you can win (or whether your case will be called frivolous and somebdoy will be threatened with sanctions, but nobody gets sanctioned, that's a long story). Ambiguity means that nobody's sure how the case will end, which means that you will more likely settle instead of actually going all the way through court, but how you negotiate the settlement depends on the way you both percieve the situation, which depends on subtle factors like that ambiguity, PR, procedural posturing, value of the code base and the patent, how intimidating your lawyers look, etc.

The rest of the text might or might not matter. I am not your attorney and none of this has been legal advice.

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