Even with Open Source, you need to protect your intellectual property (IP)
considering new types of development while keeping your rights
Prevailing thought:
Protect your investments, understand your rights, be proactive on any partnerships or open source work.
Overheard, at multiple meetings:
- “We use open source code; we do not need controls or IP, it’s open. Right?”
- “We want to start an open source foundation, but we want to control the direction and all content.”
- “We are developing <<new product, new code, new research>> together, we will worry about the ownership later.”
Sorry, but wrong for all of these statements. You spend a considerable amount of money and resources developing things that have value to your company. It follows that you should want the maximum leverage value out of those efforts. Protecting and leveraging your intellectual property, regardless of whether it is patents, trade secrets, trademarks or copyrights, is the first step in defining the value and protecting the usage.
Let’s talk Open Source first. IBM is very active in open source, donating, using and supporting open source foundations. The first step in open source usage is understanding the rights you are giving up or getting based on any open source foundation license. IBM approaches open source first by understanding the rights, and selecting the foundations with which we work. Pre-screening code before using it in your internal code is a best practice, and tracking the open source code used in your products is the minimum requirement. And open source is by definition “open”…meant for sharing, so no one company will control the direction or the assets.
In this article Simon Phipps sets out certain ways in which relying on open source software can provide real relief from patent concerns. Specifically, Mr. Phipps mentions the Open Invention Network, of which IBM is a member, the patent licensing terms of certain open source agreements. He also open source as a mechanism for defensive publication, and the relationship between certain open source projects and open standards.
Mr. Phipps provides very valid observations, but an open source approach in no way precludes the strategic use of patents in parallel. Why use patents? Value. Credibility. Other business uses.
Patenting innovations you contribute to an open source project brings important advantages: the patented invention can be enforced against an organization using your invention outside the open source project. This may provide negotiation leverage, licensing income, and an additional incentive for others to adopt your open source project. An example of leveraging credibility: IBM donated several hundred patents supporting Linux in the early 2000’s (reference: article). This provided other companies a baseline of credible inventions to build on, and spread the use of Linux.
Your technical staff may also generate inventions which are not directly implemented in the products or software used in your business. These inventions may have many technical aspects which are not directly embodied in any open source form — the way tools are configured and used internally, the way they interface with other systems, and many other innovations concerning the way you do business. The adoption of an open source policy should in no way blind an organization to the value of these innovations, and the importance of intellectual property as a means to realizing that value.
So what do partnerships have to do with any of this? A partnership is based on multiple parties coming together with a common goal or joint need. Whether that is in an Open Source foundation or a specific company to company agreement, you need to understand the IP rights BEFORE you start work. Each party typically comes with some knowledge or inventions (background IP). The parties will combine efforts, or work in parallel, to develop something new. Who owns the new innovations? What rights do you have to use the results?
Why do you need to define rights before the work is started? Let’s use an example: Party A has patents, know-how and trademarks on a current product. Party B has know-how and industry specific knowledge. The partnership is to develop on top of the Party A platform an industry specific implementation. It starts with trust and a handshake. What happens when the end product is a blockbuster success? Who owns the rights of the co-developed solutions? Imagine if your trusted partner patents the results and now charges you a license fee for use. And this is not hypothetical, it really happens, all the time. Identify early, before work starts, the ownership, the IP rights for further usage and derivatives. If you do this and get it in the contract while the relationship is still positive, end results will be better. Having patents on your background IP early also helps you construct the contract in terms of IP rights.
Need help defining your IP Strategy? Contact the author, Sue Hallen
The IBM Intellectual Property Management Solutions (IPMS) team assists companies in defining all aspects of IP Management and is also applying Watson technologies to IP use cases such as Evidence of Use, Prior Art, Landscapes and others. Contact me for further information.
