OPINION
An Uncommon Commons

Last week's announcement that Big Blue was giving away patents was viewed as uncommonly good news in open source circles. When IBM (NYSE: IBM) decided to contribute 500 of its patents to a "patent commons" for the benefit of open-source software developers and end users, it conjured up visions of a city commons where passersby could enjoy a sunny morning listening to the birds.

There among the trees, grass and benches, I could just picture 500 patents stacked neatly next to the Civil War statue in the center of the green. But as an intellectual property attorney, I know from experience that it just does not work that way.

Patent Field Not a Peaceful Meadow

Patents do not convey the right to do anything. Patents merely grant the legal right to stop others from doing something. For example, if I invented the armchair and obtained a patent, that patent would not give me the right to make armchairs. Someone else might have an earlier patent on the chair that gives them the right to exclude me from making chairs, with or without arms. Since I do not have the right to make armchairs, opening up my patent rights to others does not convey them the right to make armchairs.

This is very different from the positive property rights associated with physical things and land. If I own the right to exclude others from a patch of grass, I typically have an ownership interest that allows me to frolic on that patch of grass. Presumably, I could pass that right to others and create a common area.

Apples and Oranges: Copyrights vs. Patents

A "creative commons" (tip of the hat to Lawrence Lessig) can exist for copyrighted works, such as software, a Web page, a book, a play, a movie, etc., since an author can grant a positive right to use the work. When the author knows that he or she created the work themselves, they know there is no copyright infringement to worry about.

Copyrights and patents are very different intellectual property rights. The most important difference, at least within open-source communities, is that copyright rights do not extend to independent creation, but patent rights do. If I write a program without access to yours, mine is not an infringement of your copyright even if it turns out to be identical.

Of course, if I have thousands of lines of code that match yours byte for byte and bug for bug, I may have a tough time getting a judge or jury to believe me. But if I could show that it was just a coincidence, I would be free to distribute my program.

With patents, I could be totally ignorant of your invention and still be prevented from producing it if your invention predates mine. We could debate whether that is good for society, but I doubt that having an independent invention exception is workable, and in any case that is not currently the law. It is this aspect of the patent law that makes it difficult to create a "patent commons." With patents, even thousands of dollars in legal fees and research might not lead to a definitive conclusion that no patents are infringed.

"Statement of Non-Assertion of Named Patents" Doesn't Sound Like a Donation

In legal terms, one cannot donate a patent right to the public because it does not make sense. A patent is the legal right to exclude the public from doing something. So if one gives everyone a license, there is nothing left for the public. Now, a patent owner can in effect dedicate a patent to the public by filing a disclaimer of the patent, in which case the exclusionary rights that the patent owner had no longer exist. IBM did this with its patents on DES (digital encryption standard) many years ago.

A playwright can donate a play to the public and allow anyone to use it in community theater, but that is donating a copyrighted work while extinguishing the copyright. However, we should not focus too much on the fact that one cannot create a "patent commons" by donating patents to a common pool. The real story is in the details of what IBM actually did grant to the public.

The fun begins when we look past the media reports to IBM's own press release and its published statement including a list of the patents. IBM promised not to sue any open-source developer, distributor or user, and stated clearly that IBM is legally bound by that promise. However, the statement contains disclaimers that limit IBM's promise in two ways.

First, the promised license does not extend to proprietary works. In its statement, IBM clearly defines open-source software, including all of the licenses certified as open by opensource.org at the time the press release is dated. This is a nice twist, as it adds more incentives for creators to use an open-source license just to avoid IBM's formidable legal team.

Second, while the promised license is binding on IBM, IBM can revoke it with regard to any party that files a lawsuit asserting intellectual property rights against open-source software. That's a doozy of a loophole and merits its own column. At least we can take comfort in the fact that if we needed to file a lawsuit against someone who is violating our intellectual property rights in their open-source software, we would be no worse off than if IBM hadn't made this promise in the first place.

A Key Strategic Move

Make no mistake: IBM's move is good for many open-source communities, so let's not be too critical. However, it also keeps IBM in control and might be more of a matter of perception than reality. IBM certainly did not give up any ability to sue someone for something if it is so inclined. It has more than 40,000 patents, so it can probably find something to assert in the other 39,500 patents if it wants to.

There is no way that anyone, including IBM, could determine that the 500 listed patents are the only ones that cover typical open-source software projects.

Life is about choices. We can choose to enjoy a sunny day, lounging in the grass and enjoying the smell of the flowers and the sound of the birds. Or we can choose to rail against the city parks department for failing to keep the commons free of dog poop and riff-raff.

Whether IBM's "patent commons" proves to be the common ground we all seek or is a diabolical mess of complicated clutter is hard to tell. For now, heading back to the garden sounds pretty peaceful. See you there.