The week Twitter announced a new policy under which it will obtain patent assignments from its employee-inventors. Unlike most employee invention assignment agreements, in which the employee is required to assign inventions to the employer without restriction as a condition of employment, Twitter’s new policy will restrict what the company can do with the assigned inventions. According to Twitter’s announcement:
It is a commitment from Twitter to our employees that patents can only be used for defensive purposes. We will not use the patents from employees’ inventions in offensive litigation without their permission. What’s more, this control flows with the patents, so if we sold them to others, they could only use them as the inventor intended.
On this basis, Twitter has rolled out what it calls the Innovator’s Patent Agreement (IPA). Under the IPA, Twitter agrees that it will not assert the assigned patent against any third party unless the assertion is for a
“Defensive Purpose.” The IPA also states that this restriction will follow the patents to any subsequent purchaser. The announcement states that by introducing the IPA, “employees can be assured that their patents will be used only as a shield rather than as a weapon.”
However, the IPA’s definition of “Defensive Purpose” is fairly broad. The IPA defines “Defensive Purpose” as the assertion of a patent claim:
- (a) against an Entity that has filed, maintained, threatened, or voluntarily participated in an intellectual property lawsuit against [Twitter] or any of [Twitter’s] users, affiliates, customers, suppliers, or distributors;
- (b) against an Entity that has filed, maintained, or voluntarily participated in a patent infringement lawsuit against another in the past ten years, so long as the Entity has not instituted the patent infringement lawsuit defensively in response to a patent litigation threat against the Entity; or
- (c) otherwise to deter a patent litigation threat against [Twitter] or [Twitter’s] users, affiliates, customers, suppliers, or distributors.
In other words, if a company was a plaintiff in any patent infringement suit during the past ten years, or if the company ever threatened or instituted litigation against Twitter or any of its more than 140 million users, customers or suppliers, then that company is fair game to be sued under Twitter’s patents.
Twitter has posted the IPA on GitHub, in an apparent nod to the open source community and as a way to solicit feedback and encourage other companies to use the IPA. Because of this, we might compare Twitter’s IPA with the patent license clause of the GNU General Public License v3. The GPL v3 applies to open source software and states that if any “contributor” creates or modifies GPL v3-licensed software, then that contributor grants downstream users a non-exclusive, worldwide, royalty-free license under the contributor’s essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of the version of the software that the contributor creates or modifies. There are no restrictions on this license — it applies to all downstream users.
So, the Twitter IPA’s non-assertion clause is not nearly as “open” as the patent licensing terms that are familiar to the open source community under the GPL v3. However, as others have commented, a truly open approach would significantly reduce the value of a company’s patent portfolio. It will be interesting to watch whether other companies use Twitter’s approach, and if so how they may modify it in the future