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Let's say I have patented an algorithm, but want to make the source of an implementation of the invention freely available and allow non-commercial use. The most common opensource licenses do not have "non-commercial" restrictions, and creative commons is not recommended for software.

It is well known that the MIT and BSD licenses do not grant explicit rights to the use of patents embodied in the licensed software (the MIT license contains the phrase

THE SOFTWARE IS PROVIDED "AS IS", WITHOUT WARRANTY OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT.

As such, I was thinking of using an MIT or BSD license for the software, while including a "patent pending" or "patented" warning somewhere, along with instructions on how to obtain a license to the patent (once granted).

Is this a good idea? Does opensourcing my implementation have any legal implications, e.g. with respect to enforceability of the patent? Would an MIT / BSD license on the software not imply a right to use the patent, especially if the software license is granted by the patent holder?

  • If I were you, I'd add clear notices that the software contains a patented mechansim and commercials use of that patent is not authorized. I don't know how a judge would rule if someone claimed that the MIT license from the patent owner included "rights to use, copy, modify, merge, publish, distribute, sublicense, and/or sell copies of the Software". The MIT license is supposed to be a copyright license, but the more I look at it, the less sure I am that you could successfully defeat a claim from someone who says "you explicitly gave me the right to use the software, so I did." – apsillers Jun 3 '16 at 12:24
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You can't patent an algorithm, but I'll assume you are talking about the case where you have patented a machine or process that uses an algorithm, but that adds significantly more, and that the software being distributed implements much of this process.

Courts might find an implied licence or promissory estoppel when distributing software under an open source licence that doesn't explicitly exclude patent licencing as part of its terms.

It would be prudent to state your patent rights and explicitly exclude a patent licence if you intend to enforce your patent rights.

As an example, this software implicates a patent , so they allow "permission to use, copy, modify, and distribute this software and its documentation for educational, research, and non-commercial" purposes. Users that want to use the software commercially need to contact the authors who also happen to be the patent owners, and I assume would negotiate a patent licence at that point.

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