Could the Apache 2.0 Patent Grant Undercut My Own Patents?
My team added a dependency licensed under Apache 2.0 last Tuesday. Nobody read the license, because nobody reads Apache 2.0.
Something in Section 3 of that license touches patents, and I do not actually know what it does to mine. Patents are part of how I describe my defensibility to investors, and I have never checked what this one gives away.
What Does the Apache 2.0 Patent Grant Say?
Section 3 provides that each Contributor grants a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable patent license to make, use, offer to sell, sell, import, and otherwise transfer the Work. The grant covers those patent claims licensable by that Contributor which are necessarily infringed by their contribution alone, or by combining it with the Work it was submitted to.
In plain terms: contribute code, and you license the patents that code practises to everyone who uses the project.
What Is Patent Retaliation?
The same section carries a defensive termination provision. If you institute patent litigation, including a cross-claim or counterclaim, alleging that the Work or a contribution within it constitutes direct or contributory patent infringement, then any patent licenses granted to you under that license for that Work terminate as of the date the litigation is filed.
The purpose is deterrent. The consequence is that a company holding patents may find that asserting them against a project it also depends on means losing the right to use that project.
Why Does This Matter for a Startup With Patents?
Consider a company with two pending applications on a synchronisation technique, where patents are part of the investor story. Separately, the engineering team publishes a utility library under Apache 2.0 that includes a simplified implementation of the same technique, as a developer relations exercise.
Three years later a competitor ships something that looks infringing. Two problems appear. The published contribution carried a patent grant, so users of that library hold a license to the patents it practises. And the company’s own product depends on Apache 2.0 components, so initiating litigation raises questions about its continued license to code it ships.
Neither makes the patents worthless. Both were created by an engineering decision nobody reviewed, and neither can be undone, because the grant already went out.
Common Mistakes Founders Make
- Publishing an implementation of your own patented technique under a license with a patent grant. That is a patent decision, not a developer relations decision, and it should be reviewed as one.
- Assuming every permissive license carries a patent grant. Some do and some are silent. Where a license is silent, whether any patent license exists is a harder question.
- Not knowing which retaliation clauses you have accepted. They only matter on the day you want to assert a patent, which is exactly the day it is too late to renegotiate.
A Quick Founder Check
- Have we filed, or do we plan to file, patent applications?
- Has any of our code implementing that technology been published under an open source license?
- Which licenses do our published projects use, and do they include express patent grants?
- Do our dependencies include licenses with patent retaliation clauses?
- Does anyone review open source releases against our patent portfolio before publication?
- Do we have a written policy for what employees may contribute to outside projects?
- Have our patent counsel and our open source decisions ever been in the same conversation?
The Bottom Line
This is a narrow issue that matters enormously to a small number of companies and barely at all to the rest. The distinguishing question is simple: do patents factor into your defensibility? If they do, your open source releases need review before they ship.
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