Protecting Open Innovation with the Defensive Patent License

Jennifer Urban (UC-Berkeley)
Business
Location: D137/138
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Software and other abstract patents have a well-deserved bad reputation—deservedly—among innovators. Academics, innovators, and others are skeptical of claims to patent broad abstract ideas. And the large number of software patents in the system raises the specter of “weaponized” patents that threaten legitimate competitors or new entrants to the marketplace.

So it may come as a surprise that Jason Schultz and I propose that innovators should—even must—opt back into the patent system if they wish to protect themselves from the growing threats that patents pose. Indeed, we think that this is true even for those—such as free and open source software developers—who practice open innovation. Specifically, we propose that innovators obtain patents that they commit to keeping defensive and link them together in a defensive network. This method would leverage the patent system as it exists today, and requires no legal reform. This is important because, unfortunately, we think legal reform is unlikely to happen anytime soon.

To do this, we propose the Defensive Patent License (DPL). Innovators that choose the DPL make two main promises: (1) that anyone can take a royalty-free license to their patents in exchange for a promise that the licensee will also offer their own patents under the DPL; and (2) not to use patents against any other DPL user except defensively. As innovators opt in to the network, the DPL would both keep their patents defensive over time and also promote multilateral disarmament by creating a network of patent holders who are publicly and legally committed to defense.

The DPL’s obligations “travel with the patent:” in the event that a patent is sold, its new owner also must abide by the DPL’s terms. By “deweaponizing” patents in this way, the DPL could help limit lawsuit risk. This is especially true for the risks posed by patent trolls, because a patent that can be used only defensively against a large network of innovators is likely to have little value for a troll.

This session introduces the DPL, and requests thoughts and suggestions. A paper lays out the idea in more detail:

Photo of Jennifer Urban

Jennifer Urban

UC-Berkeley

Jennifer M. Urban is an Assistant Clinical Professor of Law and Director of the Samuelson Law, Technology & Public Policy Clinic at the UC Berkeley School of Law.
Broadly, her research considers how values such as free expression, freedom to innovate and privacy are mediated by technology, the laws that govern technology, and private ordering systems.

Her clinic students represent clients in numerous public interest cases and projects at the intersection of societal interests—including civil liberties, innovation, and creative expression—and technological change. Recent Clinic projects include work on individual privacy rights, copyright and free expression, artists’ rights, free and open source licensing, the “smart” electricity grid, biometrics, and defensive patent licensing.

Her recent papers include:

“Protecting Open Innovation: The Defensive Patent License As a New Approach to Patent Threats, Transaction Costs, and Tactical Disarmament” 26 Harvard J. Law and Tech. — (2013) (with Jason Schultz) http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2040945

“How Fair Use Can Help Solve the Orphan Works Problem,” forthcoming 27 Berkeley Tech. L.J. — (2013) http://papers.ssrn.com/sol3/papers.cfm?abstract_id=208952

“Mobile Phones and Privacy” (with Chris Hoofnagle and Su Li) (2012) http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2103405;

“Mobile Payments: Consumer Benefits & New Privacy Concerns,” (with Chris Hoofnagle and Su Li) (2012) (SSRN: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2045580;

A. Morin, J. Urban, P. Sliz, “A Quick Guide to Software Licensing for the Scientist- Programmer,” PLOS Computational Biology Vol. 8, Issue 7, e1002598 (July 2012);

“Shining Light into Black Boxes,” Science Vol. 336, 159-160 (Apr. 13, 2012) (authors A. Morin, J. Urban, P. Adams, I. Foster, A.j Sali, D. Baker, P. Sliz).

Professor Urban comes to Berkeley Law from the University of Southern California’s Gould School of Law, where she founded and directed the USC Intellectual Property & Technology Law Clinic. Prior to joining the USC faculty in 2004, she was the Samuelson Clinic’s first fellow. Prior to that, she was an attorney with the Venture Law Group in Silicon Valley. She graduated from Cornell University with a B.A. in biological science (concentration in neurobiology and behavior) and from Berkeley Law with a J.D. (intellectual property certificate). She was the Annual Review of Law and Technology editor while a student at Berkeley Law, and received the Berkeley Center for Law and Technology Distinguished Alumni Award in 2003.

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