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Imagine, a company, contributes to a huge Apache 2.0 project. The company owns a patent. The project is huge, and there's a small fragment of its code which infringes on the patent. The company submits a contribution to unrelated code fragment.

Does such a contribution give a license grant to the patent?

Apache 2.0 has the following patent grant:

Grant of Patent License. Subject to the terms and conditions of this License, each Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted.

It says, applies only to those patent claims. What does it mean exactly in respect to the situation above?

2 Answers 2

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Does such a contribution give a license grant to the patent?

No.

The license grant is expressly limited to

those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted.

The question supposes that the material contributed by the patent holder is unrelated to the infringing part of the work. In that case, the contribution itself does not infringe, and the infringement is not created by combining the contribution with the rest of the work, either. The combined work's (continued) infringement is therefore outside the scope of the patent licensing clause.

Another answer observes that the purpose of the patent-licensing clause is to prevent bait & switch maneuvers, which is true, but it's also crafted carefully to avoid making it unpalatable to well-meaning patent holders. No one who held patent rights that they wanted to protect would make contributions if they had to worry that they might thereby unintentionally and unforeseeably grant a patent license because of infringement unrelated to their contributions.

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In normal English, if a company holds a patent and that same company makes a contribution to an Apache-licensed project that causes the project to infringe on the patent, then the Apache license causes/forces the company to also give a patent licence.

In other situations, like when the project was already infringing without the contribution of the company, or a later modification by someone else causes it to start infringing, no patent licence is given.

This clause of the Apache licence primarily prevents bait-and-switch practices, like adding something you know infringes on your own patent and then sue the project for infringing that patent. It does not prevent protecting your patent against infringement caused by others.

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  • The problem is that I suspect that this is the case due to use of words necessarily and only, but I don't understand how what you say implies from the license text. Jan 6 at 13:45
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    @KonstantinSolomatov Indeed, the patent license only relates to patents that are necessarily infringed. And this is a question, which usually is very difficult (and expensive) to determine. I think the facts about the license are sufficiently clarified by Bart's answer. Your questions about 'necessary infringement' details might be better placed in Ask Patents. Jan 6 at 13:55

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