Back in the days of my early education (and probably most people of my generation who went through the U.S. education system), English teachers used to love to have students create sentence diagrams. This pedagogical exercise was designed to help students identify the major parts of speech (subject, verb, object) in an English-language sentence, as well as the other ancillary words used in composing that sentence. The point of the exercise was to identify where certain words were incorrectly or confusingly used in a sentence. After learning how to do a sentence diagram, most students (except maybe those who went on to become English teachers) forgot the whole thing.

For the legal draftsperson, understanding parts of speech can actually be a useful exercise, as it can elucidate issues in the way a particular legal document may be incomplete. An excellent example of how that issue works out in actual, legal, practice, it the debate around the BSD license (or at least, the -0, -1, -2, -3 & -4 clause variants) and the scope of the grants in that license. Several years ago, there was a vigorous debate, which actually made it into the legal academic literature, about whether the grammar of the BSD 1-4 clause licenses conferred a patent license to the recipient. One set of authors, primarily relying upon statements from the license authors/stewards, argued they do not; another author, relying at least in part upon the actual grammar in the license – and in particular the verbs used – argued they do.

During the time that this debate was most vigorous, I did a short presentation including a grammatical analysis of a group of OSI-approved non-copyleft (also known as “permissive”) licenses: BSD, MIT, Apache 2.0, UPL and BSD+Patent (full disclosure: I authored BSD+Patent and shepherded it through the OSI approval process). The point of the analysis was to show which licenses used which verbs from U.S. copyright and patent law (which outline the exclusive rights under copyright and patent, and thus those rights that a copyright or patent holder may confer via a license). Some licenses use but a few of these verbs; the absence of a verb might allow a licensor to later argue the rights that that verb encompasses were not granted. And there's at least one license, apparently a BSD-variant, which has chosen and omitted different verbs, for reasons which are not entirely clear. Of additional interest to the legal grammatician are the objects of the verbs in these licenses, which are also outlined in the presentation.

In an international context, it can be even more interesting. Different jurisdictions use different verbs, which may (or may not) correlate with one another, and some of those verbs may not be used in licenses primarily drafted with U.S. law in mind. I have prepared a separate set of charts outlining how those verbs are used internationally (one of these charts will be included in a book chapter I wrote for a book coming out later in 2022).

Another factor which potentially comes into play – at least in the U.S. – is whether the use of certain verbs without the recitation of all statutory or treaty verbs nevertheless should be interpreted as implying a license to the exercise the rights in the unrecited verbs. Implied patent licensing has been a subject of analysis for both the MIT and GPLv2 licenses.

Whether these questions will ever be the subject of a live legal dispute, and if so, how it will be resolved, remains to be seen. Nevertheless, it has certainly become a practice in more recently-developed FOSS licenses to include a full list of operative verbs to reduce the risks that the licensor will argue later that certain rights were reserved or not conferred by omission. Perhaps the best way to curtail such arguments is to make sure the license involved is as grammatically robust as possible.

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Updated: Apr 15

If you’ve spent any amount of time in the world of Free & Open Source Software (FOSS) – or the world of “free and open source” anything – you likely have encountered a degree of alarm or downright hostility to patents in general, and “software patents” in particular. For more than 20 years, patents have been characterized as creating a significant threat to the continued development of software in a free, open, and collaborative way. Much has been said about the threat of patent holders without significant businesses other than collecting patent royalties or litigation settlements – and there is a small cottage industry dedicated to creating graphical images to be associated with these entities.

Over the past 20 years, there have been a number of different mechanisms deployed to mitigate some of the patent risks against FOSS: better FOSS license drafting, “patent pledges,” recognition of rules of good community citizenship, and other smaller impediments. But there has always been a glaring hole that these mechanisms are not able to plug. As I have detailed to several different FOSS audiences, there are existing mechanisms to plug this hole – direct challenges to problematic patents themselves. I have talked about these mechanisms, how they work, and how to think strategically about using them.

With that background, one of the first real tests of an unmitigated patent threat against a FOSS project was the lawsuit filed in 2019 against the GNOME Foundation. I had hoped, given the early statements of both the GNOME Foundation (“Agreeing to [a license] would leave this patent live, and allow this to be used as a weapon against countless others”; “we will fight your suit, and we will have your patent invalidated”) and Unified Patents, that is exactly how the patent asserted against GNOME would be handled. Over $150,000.00 was raised (and continues to be raised!) from thousands of FOSS community members for this anticipated fight, and the pledges that were made that the asserted patent would be fought, and eventually invalidated. Alas, that was not to be – at least not by those entities. Instead, on behalf of our client Defease Patents LLC, this firm filed a reexamination proceeding in October 2020 in the U.S. Patent & Trademark Office specifically challenging the validity of the patent (“Rothschild ‘086”) asserted against GNOME (among others – over 20 patent lawsuits had been filed in various federal courts asserting the Rothschild ‘086 patent).

The administrative proceeding we filed against the Rothschild ‘086 patent has now reached its conclusion. Every claim of that patent has been cancelled; the image above is the official certificate, issued on behalf of the Commissioner of Patents, cancelling all claims. The Rothschild ‘086 patent is no more; it has ceased to be; it is an ex-patent. As was promised (by others), the patent is now no longer live, it may no longer may be used as a weapon against countless others, it has been invalidated. This is a patent that had been the subject of numerous lawsuits all over the United States; from now on, it now no longer will.

If patents are indeed a continuing threat to FOSS, then talking down patents isn’t going to be enough. “When You have to shoot – shoot. Don’t talk.”

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Lex Pan Law this year became a supporting partner of the Open Source Initiative. Most of you who work in the Free & Open Source Software (FOSS) field are probably familiar with the OSI, its activities, and mission. OSI maintains a list of approved open source licenses, which much of the industry relies upon in deciding what license to choose when deciding to open source a piece of software (or in some cases, other technologies). It also has a process for review and approval of new licenses, where a number of very thoughtful reviewers and commentators express their opinions upon conformance of licenses with the open source philosophy as well as legal rigor. If these topics of interest to you, you should subscribe to their mailing lists and comment on issues you feel are important.

Last year, the OSI appointed its first Executive Director, which should help the OSI focus on pressing projects and garner more industry support (financial and otherwise).

Administration of the OSI is through an elected board, with board members serving fixed-length terms and with any OSI individual member being eligible to run (and all OSI members having an equal vote). This level of transparency and receptiveness to membership feedback is one that other similar organizations should follow (even if the results of the elections don't necessarily reflect one's own personal preferences).

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