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Many CLAs contain the below clause that is more or less taken from the Apache2 license:

Grant of Patent License. Subject to the terms and conditions of this Agreement, You hereby grant to ACME and to recipients of software distributed by ACME a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by You that are necessarily infringed by Your Contribution(s) alone or by combination of Your Contribution(s) with the Work to which such Contribution(s) was submitted. If any entity institutes patent litigation against You or any other entity (including a cross-claim or counterclaim in a lawsuit) alleging that your Contribution, or the Work to which you have contributed, constitutes direct or contributory patent infringement, then any patent licenses granted to that entity under this Agreement for that Contribution or Work shall terminate as of the date such litigation is filed.

I am unsure about what this means in a scenario where

  1. A project we contribute to does infringe some patent of my company
  2. My contribution does not contain or touch those code parts

If I read this correctly

[...] that are necessarily infringed by Your Contribution(s) alone or by combination of Your Contribution(s) with the Work to which such Contribution(s) was submitted [...]

my contribution has to infringe that patent and if it does I grant the license. So the question is - when is a patent considered to be infringed? If I just change a typo?

Our lawyers take is:

  • if we sign the CLA
  • and contribute to a project that infringes one of our patents in any way
  • we will grant the license

Consequently, we have to check each project we contribute to for potential patent violations. (which is pretty much impossible)

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The goal of these patent clauses is two-fold:

  • that contributors cannot create patent traps. For example: contributor A makes contributions. Using the contributions causes A's patents to be infringed. Without these clauses, A could later sue the project's users.

  • that someone who works against the project by claiming patent infringement doesn't simultaneously enjoy other contributor's patent licenses: you can't sue and use the project. This is intended to discourage legal action against the project and its users.

Normally, a patent-relevant contribution would work like this:

  • the project is not infringing your patents
  • you make a contribution
  • with this contribution, the project would infringe your patents
  • by making the contribution, you issue a license to these patents

You are suggesting a more interesting scenario:

  • the project is infringing your patents
  • you make a contribution that does not relate to the infringed patents

Will this contribution then cause a patent license to be issued?

  • Whether or not you grant a license, you can't sue for infringement or any patent licenses you received through the project will terminate.
  • “Combination” can denote an act or a state/result.
  • The act of combining of your contribution with the project doesn't cause your patents to be infringed. However, the result of the combination does infringe the patents.
  • I could see this being argued either way.
  • As a patent holder, the safe assumption would be that you would be issuing a license for any patents that would be infringed by the result of the combination of your contributions with the project.
  • Your lawyer's advice seems sensible.

You are not required to check the project for possible violations first: you do not need to explicitly license individual patents, you effectively just lose the right to claim infringement.

If you are a patent holder and do not want to freely license these patents, then you should stay away from such CLAs and open source projects in general.

  • Do not contribute to such projects. Do not copy or share such projects.
  • If you need to modify the project, keep the modifications private.
  • If you want to use such software, prepare a migration plan to a different software in case you want to claim that the project is infringing your patents.
  • Note that there's a legal theory that open source licenses without an explicit patent license (like MIT, BSD) may still have an implied patent license, either through the rights that you grant or through estoppel.

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