3

I just published a project on GitHub that I've been working on for a few years to see if I could maybe get some help polishing it up and augmenting it from here. I'm trying to choose a license and I would like to find one that protects my ability to patent at some point in the future, should I choose to do so.

I would say that most or all of the patentable functionality is already intact and what others might contribute would largely be superficial or auxiliary. Does that mean that the core idea can safely be considered "mine" for the purposes of patenting, even if others add things onto it?

Is there a license that prevents anyone but me from patenting the functionality embodied in the project? (Even if they're free to distribute it in the meantime)

  • 3
    If you do genuinely hope to secure a patent, you may wish to remove your public disclosure of the system immediately, which otherwise will (or may already have) invalidate you abaility to meet the the novelty requirement of patent law. In the United States, you fortunately have a full year following public disclosure to file a patent, but in most other jurisdictions, public disclosure is an immediate disqualifier. (Your own public implementation counts as "prior art" that can disqualify your system from patentability.) – apsillers Mar 9 '18 at 20:29
8

There are many licenses that do not include an explicit patent license, e.g. MIT or GPL prior to version 3. These licenses only discuss copyright and warranties, not patents. In contrast, some licenses such as Apache 2 and GPLv3 include explicit patent grants.

But there are a few issues regarding patentability:

  • Depending on your jurisdiction, only original, unpublished inventions can be patented. Publishing your invention prior to a patent application may count against you as prior art, regardless of the copyright license used.
  • Assuming the invention is still patentable, any contributors may be co-inventors. In any case, this will complicate the patent application.

Assuming the patent has been granted, the question arises whether the open-source software may be used even if there isn't an explicit patent license. You may have given users of this software an implicit license by publishing the project – first publishing as free software and then trying to revoke the right to usage could be seen as an act in bad faith. But what is the economic value of the patent, if anyone could effectively use it for free?

So for all these reasons, it is

  • unwise to publish a project with the intention of patenting parts of it later, regardless of the copyright license, and
  • unusual to both reserve some rights through patents, yet allow free usage by publishing as open source.
4

I'm trying to choose a license and I would like to find one that protects my ability to patent at some point in the future, should I choose to do so.

By publishing your code without securing or applying for a patent first, my take is that you have quite likely surrendered your rights to patent whatever ideas are implemented there, as least in the US. This make your question about a license choice moot IMHO.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.