licensing patents open-source-software intellectual-property
MIT License for patented software
<p>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 <a href="http://choosealicense.com/" rel="nofollow">opensource licenses</a> do not have "non-commercial" restrictions, and creative commons is <a href="https://wiki.creativecommons.org/index.php/Frequently_Asked_Questions#Can_I_apply_a_Creative_Commons_license_to_software.3F" rel="nofollow">not recommended</a> for software.</p>

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

<blockquote>
  <p>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 <strong>NONINFRINGEMENT</strong>.</p>
</blockquote>

<p>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).</p>

<p>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?</p>

<p>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 <em>uses</em> an algorithm, but that adds significantly more, and that the software being distributed implements much of this process.</p>

<p>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.</p>

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

<p>As an example, <a href="https://github.com/herbertbay/SURF/blob/master/surf.h" rel="nofollow">this software</a> implicates a <a href="http://www.google.com/patents/US20090238460" rel="nofollow">patent</a> , 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.</p>
