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In 2006 Microsoft published their Commitment not to Sue which applied to many patented specifications.

In 2014 Tesla made their Patent Pledge, which applies to every patent that Tesla has now or in the future. It specifically mentions that:

the Pledge is not a waiver of any patent claims ... and is not a license, covenant not to sue, or authorization to engage in patented activities ...

If Microsoft or Tesla wished to allow others to implement their tech, why not simply give everyone a license to use their patents? What is the difference between a Covenant not to Sue and a Pledge?

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    Why not file a disclaimer with the USP{TO and other offices? – George White Jan 14 at 20:05
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There's a few good reasons that spring to mind.

Firstly, it's possible that Tesla or Microsoft have been themselves licensed something where the license is not sub-licenseable. This would prevent them from subsequently licensing you, but a promise/pledge is not a license and they can go right ahead and make promises.

Secondly, a license is broadly an agreement between two parties. A promise doesn't require formal acceptance whereas a license does.

To answer your question regarding a covenant not to sue - that's something else entirely. A covenant not to sue is a legal agreement between parties where the party seeking damages agrees not to sue the party it has cause against, whilst still preserving the existence of the cause (and conditions may have been set that must be met for the covenant to stand). For example, Party A still maintains that Party B used work that was not licensed to Party B, but Party A has agreed not to sue on the matter, provided that Party B advertises the fact that the work was used.

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  • If something was licensed to them and not owned by them, the issue of them suing would be moot. Only the owner or the exclusive licensee with all rights has standing to sue. – George White Jan 14 at 5:30
  • "Secondly, a license is broadly an agreement between two parties. A promise doesn't require formal acceptance whereas a license does." My understanding is that most open-source licenses are such agreements, and the acceptance happens when the software is used. Why couldn't that be done here? – Shelvacu Jan 14 at 8:30
  • @Shelvacu You're right, agreement can be as simple as making use of the content, or clicking "I Agree" however that doesn't help with the other reasons - licenses are so wordy and difficult to read because they have to cover so many eventualities and finer points to provide for & prevent liabilities, to outline acceptable-and-non use, etc. Ultimately, when a company pledges not to sue, they are reserving many of their rights - while a pledge is effectively more permissive to you or I (no need to attribute, etc.), a license opens the company up for us to sue them (it's a two-way agreement). – James Decker Jan 15 at 2:40
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Making a pledge not to sue doesn't create any liabilities for you other than the liability that you cannot sue.

Giving someone a license could lead to trouble, for example if a third party turns up with claims that they are the owner of the patent, and they obviously want damages, including payments for the licenses that you gave away. Same situation with a "pledge not to sue", there are no legal consequences for you. It may turn out you had no right to sue anyway, but that doesn't affect your pledge.

So the pledge not to sue costs you nothing, and doesn't create any legal or financial risk.

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  • How does a third party think and substantiate that they are the owner of a patent that a Tesla employee invented and Tesla applied for and prosecuted? – George White Jan 16 at 22:27
  • I don’t know. But do you claim it’s impossible? Nothing is impossible. You don’t know where that Tesla engineer got his idea from, do you? – gnasher729 Jan 17 at 10:43
  • If a patent is issued to Tesla it belongs to Tesla. Another entity might challenge this and get that patent invalidated because it was not novel at the time of Tesla’s filing. Tesla’s patent disappears but nobody else gets the patent in their place. The patent is not taken from A and given to B. Once published it is no long new and no one gets any patent. – George White Jan 17 at 21:59
  • @GeorgeWhite Well, that's an argument. My lawyer once told me "I've lost cases that I should have won, and I've won cases that I should have lost". In court anything can happen. – gnasher729 Jan 18 at 14:34
  • Courts can’t award patents, although they can take them away. – George White Jan 18 at 21:43
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You ever wonder why there are so many Open Source Licenses? Because licenses come with terms. Terms on usage, applicability, copy-left, copy-right, retention of IP, how you can/can't use it, warranty and liability, etc. Licenses are complicated, and the transfer of liability isn't always clear, which is a big concern for companies.

Now, instead they say "we promise not to sue you if you use this" doesn't require a license, you use it how you see fit at your own risk. You didn't get a license from the owner so they are not legally bound to you for fit or purpose. You can't sue them because they violated a license term and vice-versa.

There really is no difference between a "covenant not to sue" and a "pledge" in this case. They are both legally saying the same thing, "we won't sue you for using this".

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I believe they did this to not really be bound. They can retract the "pledge" unilaterally since there is no contract with anyone. Also, if you sue them for infringement you might find the pledge does not apply to you any longer.

If they wanted to, it is easy to file papers with the USPTO, etc. disclaiming a patent.

from the Tesla document -

A party is " acting in good faith " for so long as such party and its related or affiliated companies have not: asserted, helped others assert or had a financial stake in any assertion of (i) any patent or other intellectual property right against Tesla or (ii) any patent right against a third party for its use of technologies relating to electric vehicles or related equipment; challenged, helped others challenge, or had a financial stake in any challenge to any Tesla patent; or marketed or sold any knock-off product (e.g., a product created by imitating or copying the design or appearance of a Tesla product or which suggests an association with or endorsement by Tesla) or provided any material assistance to another party doing so.

They say "All Our Patent Are Belong To You" but - they will sue you under those patents if you were to challenge the validity of any of those patents. As the kids say "I call B.S."

Further, one of the things that the pledge says would let them break the pledge is if someone used their patents in bad faith. One of the examples of bad faith is "knocking us off". So, I can practice any Tesla patent including the design patent below, unless I'm knocking them off? enter image description here

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    The tesla pledge says 'The Pledge, which is irrevocable and legally binding on Tesla and its successors, is a "standstill," ' which would not seem to be retractable at first glance. Microsoft says "Microsoft irrevocably promises..." – Shelvacu Jan 14 at 8:33
  • promises to whom, in return for what? No contract has been formed and they can take back the "gift" to the world if they like. See my edited answer also. – George White Jan 14 at 19:59
  • "…they will sue you under those patents if you were to challenge the validity of any of those patents. As the kids say…" I noticed that, but this question is about why they would choose a promise over a license. Couldn't they attach similar restrictions to a license? – Shelvacu Jan 15 at 0:38
  • A license would be an agreement with a particular entity. A "pledge" is a press release. – George White Jan 15 at 0:42
  • Promissory estoppel is a thing. Suits for patent breaches would be dismissed almost immediately if the "breach" occurred through use made in knowledge of and reliance on the pledge. Since that pledge was made "irrevocable" there is never a time at which Tesla, Microsoft, whomever are not estopped from suit. 1/2 – Nij Jan 15 at 4:25

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