This post is organized according to the following sections:
a. Why should OSHW care about IP?
i.Making Openness Sticky
ii.To be smart enough about patents that they don’t cause trouble for you
2. What does copyright protect and what do patents protect?
3. Making Openness Sticky:
a. Problems with Open Software Licenses in a Hardware Context
b. We’re working on it : some options and resources
4. PRIOR ART AND CHALLENGING A PATENT
a. PRIOR ART IS YOUR FRIEND
b. CHALLENGING PATENTS
This blog post provides information from the legal discussions surrounding open source hardware in an open hardware legal meetup event hosted at NYU by Jason Schultz, founder of Defensive Patent License, November 11, 2013. OSHWA was very grateful to be part of the event. Legal professionals at the event included: Michael Weinberg, Julie Samuels (mastermind of this get together), Jason Schultz (other mastermind of this get together), and others who wish to remain anonymous.
This was the first of hopefully more discussions for the OSHWA community to better comprehend some of the complications around IP when it comes to Open Hardware technologies & companies. The discussion of this event came from some frequently asked questions to OSHWA, mainly:
- How do I protect my open source hardware from someone else patenting it?
- What options do I have for making my hardware open source and how enforceable are they?
- Will a creative commons / copyright / copyleft license on my documents protect my hardware from being patented?
A. Why should OSHW care about IP?
The main reasons for the Open Hardware community’s efforts to get a better understanding about IP is in attempt to deal with the following :
i. Making Openness Sticky
a. How to keep the technology open
b. Create the option to have enforceable copy-left / share-alike / viral licenses
c. Create a framework that grants the option to enforce that openness remain sticky: in other words, enforce that anyone who builds upon an Open Hardware technology, builds it to remain open as well (or at least, does not make it closed).
ii. To be smart enough about patents that they don’t cause trouble for you
a. Create Protection
b. Proliferate Open Source Hardware Technologies but avoid having open source hardware patented by another party.
To begin, we’ll give an overview of the current IP systems (US based), then launch into the options for open source hardware and finally walk you through challenging a patent (let’s hope that never happens).
2. What does copyright protect and what do patents protect?
Patents versus Copyrights: Distinguishing between a patent and a copyright is important when evaluating the IP framework for an open source technology. There are various IP frameworks and licenses including creative commons, GPL, copyleft, and it is possible to extend or modify the rules that each license / framework instantiates to meet the needs of a particular technology, but to do so requires understanding the rules already in place with the existing frameworks. In the context of open source software, these frameworks have relied on copyright and the inherent copyrightability of software. While these frameworks inform OSHW, they may not apply directly. As detailed below, copyright does not protect hardware as completely as it does software. This means that the OSHW community cannot simply port software- (and copyright-) focused licenses into the hardware world.
Copyright covers things you can draw out or write out, specifically documentation about the hardware or software, ie. code, diagrams, written documents, schematics, etc. Copyright does not protect ideas or manifestation of the hardware in design files, which is to say that copying of devices itself is not prohibited by copyright. What is protected by copyright are the plans. If you make an exact copy the plans [ie by xeroxing] then you have infringed on the copyright. However, if you “copy” the plans by extracting information from the plans in order to build a device or a “thing”, you have not infringed.
Patents protect an idea in process or an invention. Any item or thing is potentially patentable as long as the concept is not too abstract. The system in most of the world is known as “First to file”, which means that it is important to document prior art before the patent filing date (regardless of how that filing date is determined).
A patent can provide IP protection even in some cases where copyright doesn’t apply, so that without a patent anyone can make a physical manifestation of a device from documentation, even if it the documentation is copyrighted.
3. Making Openness Sticky:
A.Problems with Open Software Licenses in a Hardware Context
The current open hardware licenses are based on the quid pro quo of copyright, but this in an imperfect solution. Unlike software, most hardware devices will not be protected by copyright. This means that copying the hardware without permission will not violate copyright, making a copyright-based license irrelevant. In order to be enforceable, hardware licenses need a stronger legal “hook”, or reason to create permissible copies or build upon the device. The big question to answer is where this hook will come from as people in the oshw community do not depend on patents.
B.We’re working on it : some options and resources
1. The open hardware definition: by way of using the oshw logo, entitles you to agreeing with the open hardware definition, which is a communal standard, or social contract. This is not a contract you need to sign, but is in place by the oshw community which would be considered if you ever had to go to court for prior art, infringement, etc.
2. An Open hardware license, such as TAPR, CERN OHL, or Solderpad licenses: These are licenses adapted from open software licenses to apply to hardware. We are cautioned to consider what these licenses are hooked on, which in some cases may be copyright (and the open equivalents to copyright).
3. The OHANDA trademark: This is a trademark to use if you agree to the 4 freedoms listed on OHANDA’s website. The oshw definition used these 4 freedoms when writing the definition, but flushed out further considerations for what open source hardware is defined by.
4. A Defensive Patent License : A DFL is a group of patents that is a pool of shared resources – you agree not to use your patent to sue unless you get sued first. The license is perpetual, irrevocable and royalty-free, as long as you are part of the IP pool.
5. Patent a standard: The opportunity may arise in oshw to be the first to discover a standard (think USB) and could patent the standard, then grant it to the public openly (or with restriction). However, standards are set so you don’t fork all over the place, and this is not really how open source works.
6. Crowdsource the top 10 prior art innovations to send those to the USPTO: If you take the time to find and craft the prior art argument for the USPTO examiner, the examiner will have more incentive to do the right thing. There is risk that the patent will be granted anyway and invalidate the prior art completely. Crowdsourcing (some resources below) may be a great way to do this.
4. Prior art and challenging a patent
A. Prior art is your friend
To determine if a patent is original, the patent office searches for prior art. If prior art is not found, then the patent goes though. Prior art is constituted by what is public knowledge, so for example if the invention has only been stated under NDA, it is not prior art, because it was not public knowledge. Something is “in the public domain” if you can google it and find it. If you file a provisional patent as a placeholder and do not finish it, it is considered abandoned and does not count as prior art. You would have to publicly publish the invention or finish the patent for it to be considered prior art.
B. Challenging Patents
OSHWA frequently gets asked “what if someone patents my oshw design”. This situation has not happened that we know of. But, here is an idea of how the system works for challenging a patent.
First, getting a patent is easier than challenging a patent. Patent examiners have few resources, have little time, and get rewarded for awarding patents.
The first 18 months, a patent is pending, and in this stage the USPTO does not release any information about it. At 18 months the USPTO will publish pending applications. At this time, anyone can submit “prior art” to the USPTO.
You can also send the patent filer’s patent attorney your prior art for the cost of a stamp as long as your prior art is truly identical to the patent. Patent attorneys have a legal obligation to turn that into the USPTO. But if your prior art is not 100% on the mark, the lawyer can also debunk your prior art this way.
After the time period has passed for public viewing of a pending application, the patent is awarded or denied. If a patent gets awarded, you will need to petition the USPTO to review any prior art that is in the public domain that the patent examiner did not know about : this costs $7K-17K in filing fees and attorney time. The process of petitioning the USPTO after a patent is awarded is expensive (think millions of dollars) even if you have prior art. At this point you’re in litigation, so call the EFF’s branch to Eliminate Stupid Patents.
At any time in this process, you can publicly shame the patent owner. On the Internet, this can sometimes prove to be a great defense.
As a disclaimer, please note that none of the above is to be considered legal advice, but informed education about the current IP landscape and how to implement open source hardware frameworks, including some options that exist. The information here is a result of the opinions in the room who consulted with OSHWA, all US based lawyers, your lawyer may have differing opinions. An extra thank you to Michael Weinberg at Public Knowledge who helped OSHWA write this blog post.