Subject: RE: For Approval: Broad Institute Public License (BIPL)
From: "Lawrence Rosen" <lrosen@rosenlaw.com>
Date: Fri, 14 Jul 2006 12:29:14 -0700

Ernie Prabhakar wrote:
> I tend to agree with John, that as long as you (the copyright owner)
> grant the patent rights you have access to, people can live with the
> uncertainty that there may be hidden patents outside your control/
> knowledge.

As I'm sure we all know, there is a difference between "outside your
knowledge" and "outside your control."

If it comes to MIT's attention that an encumbered patent exists (for
example, some third party is about to initiate patent litigation and seeks
to name MIT as a necessary plaintiff), then I would assume an obligation
(perhaps implied?) on MIT's part to notify potential infringers through
public announcements. MIT's proposed license is trying to protect MIT
because it doesn't really know how to mine its portfolio of 2,000+ patents
every time some open source software is distributed. Nevertheless, MIT's
open source contributors ought to be obligated to disclose at least those
patent facts within their actual knowledge.

"Outside your control" is a reasonable suggestion. If MIT has granted an
exclusive license elsewhere, then (and only then) should those MIT patent
claims be excluded from the open source license.

Going forward, however, is there some plan by MIT to exclude from future
exclusive licenses any encumbrances to the free practice of patents in open
source software? Otherwise this problem will get worse and may become
subject to gaming and trolling. MIT ought to covenant that the University
itself will never assert its patents against open source software. Such a
covenant from MIT would go a long way toward satisfying the requirements of
NIH and the goal of encouraging free and open source software.

/Larry Rosen