What if I agree to submit my patents under the OPL, but later
find out that doing so causes me more problems than it solves?
It's understandable to be concerned that a new, untested
license might present unforeseen consequences. To be fair to businesses
submitting their patents, it's important to look at possible
failure modes of the OPL, and make sure they don't present a problem
for early adopters.
First, it could fail to succeed in its goal of solving most of
the problems related to (software) patents. That wouldn't be
such a big problem really: If for some unknown reason the
license simply doesn't work out as expected and that's the only
problem, we would simply be back to the status quo--it's not a
desirable situation, but we haven't actually lost ground.
The failure mode that has to be avoided is that of companies submitting
their patents under the OPL, and then later finding out that they have
potentially destroyed their company by having done so. Even finding
that they've lost the defensive benefits of their patent portfolio would be
terrible. The fundamental problem is that no matter how much the OPL
is reviewed before version 1.0, that version could still contain mistakes,
or present unforeseen problems, once companies actually begin agreeing to
No one wants to bet their company's future on an untested cross-licensing
agreement, but a cross-licensing agreement that no one participates in
is useless. It's a catch-22.
The solution is to have an escape clause in the license. For some number
of months after the release of version 1.0, anyone can withdraw from
the agreement completely, removing their patents from the various
pools, and removing their rights to use other patents in those pools.
That way, everyone can safely participate even during the very time
the participants will be most concerned about unforeseen problems.
But once the OPL has worked for a few months and has proved itself
workable, then continuing to retain that escape clause would
simply be unfair and dishonest to the other participants. Companies
will have come to base their product plans on the fact that they can
incorporate patents from the various pools. It's not fair for
companies to permanently be at the mercy of others who may destroy
these planed products by removing patents from OPL pools on a whim,
so three months after OPL version 1.0, the escape clause time will
be reduced from three months to 10 days.
That will give time for problems in the OPL to have shown up,
and by that time people will have started depending on the OPL.
Then the concern about whether it's a good idea
for a particular company to participate or not will have changed
from a concern about whether the OPL has unforeseen advantages
and disadvantages, to a concern that patents not be mistakenly
submitted. Those latter mistakes can presumably be found within
10 days of submitting patents, but finding out about former
mistakes can take months.
The license is designed to allow for enough time for both types
of mistakes to be corrected, while still being fair to those who
I'm worried that I might be accused of acting like a monopoly if
I agree to the OPL.
Patents are fundamentally monopolistic to begin with. This is an
agreement to not act monopolistic with anyone who agrees to the
same thing. This isn't an exclusive deal between major players
attempting to corner a market: Anyone can agree to the OPL,
whether they own patents or not.
The only requirement to obtain the benefits of the use of the
patents submitted is that you abandon your patent monopolies
at least to the extent that the licensor of those patents did.
My vague understanding, and I would appreciate any feedback from
lawyers, or anyone who knows about the issue in more depth, is that
the US Justice Department tends to take a dim view of patent
cross-licensing when it is used to maintain a monopoly. The purpose
of the OPL is basically to break an unfair and harmful monopoly of
certain types of IP, so I don't think antitrust problems will be
a large concern. But again, I would welcome more detailed info
or pointers on the subject. -Mark
In some circumstances, the OPL will require another company to contribute
its patents in order for it to be able to use my patents. Would the
fact that other companies can only use my patents if they open their
IP mean that an infringer can claim I'm misusing my patents?
The mere fact that you have licensed your patents under the OPL,
(such that others can use your patents only if they similarly license
their patents), won't enable infringers of your patents to successfully
use a misuse defense in the US. Or, at least that's my interpretation
of 35 USC 271(d). (I would welcome comments from lawyers on the subject,
both as an answer to this question, and to make sure the OPL doesn't
cause patent submitters to inadvertently be misusing their patents.)
Here is the text of 35 USC 271(d):
(d) No patent owner otherwise entitled to relief for infringement
or contributory infringement of a patent shall be denied relief
or deemed guilty of misuse or illegal extension of the patent
right by reason of his having done one or more of the following:
(1) derived revenue from acts which if performed by another without
his consent would constitute contributory infringement of the patent;
(2) licensed or authorized another to perform acts which if performed
without his consent would constitute contributory infringement of the
patent; (3) sought to enforce his patent rights against infringement
or contributory infringement; (4) refused to license or use any rights
to the patent; or (5) conditioned the license of any rights to the
patent or the sale of the patented product on the acquisition of a
license to rights in another patent or purchase of a separate product,
unless, in view of the circumstances, the patent owner has market
power in the relevant market for the patent or patented product
on which the license or sale is conditioned.
The New York Law Journal has
a good article on the subject.
What happens to the patents of a company that is bought out?
Patents are irrevocably submitted to the various pools, (except for
the previously mentioned exceptions.) If a company is bought out
by another that forces them to withdraw from the agreement, those
patents will remain in the pools.
(Have to have lawyers verify that the wording of the license is sufficient to
make the licensing irrevocable worldwide after the escape-clause timeouts, but
that's the intent.)