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I am a researcher working at a public research institute. A research group from another country has published an algorithm in a peer-reviewed journal and provided a server implementation of it on their website (no public code). I have implemented the recipe of this algorithm as an open-source software tool, and I plan to release it for general academic usage and potentially commercial usage. I highlight commercial because a statement from the other research group at the end of their text establishes that the authors of the paper have filed a patent describing the design and composition of their software, due to commercial interests on their side (startup). Currently, that patent's status is pending, and it might be granted, or not.

I want to license my software with an MIT license (including commercial), yet currently, I do not fully understand the liability of my research institute or mine, in case the authors decide to claim a patent infringement. Am I or my research institution liable at this point, should opt for a non-commercial version of the MIT license (and which one), or does publishing the recipe of a method in a peer-reviewed allow reimplementing and licensing it with a commercial license by others, regardless of the commercial interests of the authors?

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    Have you examined their patent application to see if what you've done is infringing?
    – jwh20
    Jan 12, 2023 at 17:15
  • Thanks for your input! I have examined the patent and I do see that the algorithm is described in detail, with mentions such as "the method can be implemented into software or servers". Is there a specific sentence that I should find, that would conclusively highlight infringement? For example, a mention that protects the creators of others implementing the same algorithm and licensing it with MIT?
    – Stierlitz
    Jan 12, 2023 at 17:54
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    It is the claims that appear in the final granted patent that delineate the scope of what it takes to infringe. Anything that embodies all elements of any single claim would infringe. Jan 12, 2023 at 18:02

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If a patent is granted the patent owners have the right to use the courts to try to stop anyone in the country where it issued from making, selling, offering for sale,importing or using the patented device.

In the case of a patent with claims to a process, the using would be they trigger. That is executing the process. There are also forms of indirect infringement where an organization provides a system, that when put in action by a customer, executes the process.

There is no limitation that the using need be commercial. Your free version could hurt sales of a properly licensed version.

What constitutes infringement? Read the claims of the granted patent. The claims in the original application and publication are likely to be somewhat different than in the final granted version. It is the claims that appear in the final granted patent that delineate the scope of what it takes to infringe. Anything that embodies all elements of any single claim would infringe.

You can follow the progress of the patent application via public information at the patent office if the country it is filed in.

Patents are territorial and only have effect in the location they are granted. You mention the paper was by researchers in another country. If they only file in one place you may be free to use, distribute etc. elsewhere.

If an inventor publishes the details of their invention before filing, they will be unable to get a patent in most of the world since most countries require absolute novelty at the time of filing. The very notable exception is the US they has a sort-of one year grace period.

The inventors have filed, presumably before publication.

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  • Thank you for your input! Authors have indeed filed before publication, yet similar works from them also indicate similar equations. From this, I am of the position that this patent should not be granted. The status of the patent is pending and and over a year, in both US and EU (my jurisdiction). I see updates with minor changes, and and reassignment to X university (host), but not been granted. I think at this point the best I can do is to take the main claim and get a legal assessment at my research institute. Again, thank you for your very well-explained description of what to check!
    – Stierlitz
    Jan 12, 2023 at 18:34

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