0

I was thinking about making something and making it OSH, but I found that there is a patent that covers some of the functionality. Is it okay for me to make a design and make it accessible to the public even if it uses the patented functionality? How does licensing and patent conflict work in this instance?

JYelton
  • 32,302
  • 33
  • 134
  • 249
multicusp
  • 3
  • 1
  • 2
    This is not an engineering issue but a legal one. You need legal advice and not from engineers. Be aware that anyone who gives you advice on this site will almost certainly not take responsibility if you have future problems. – Barry Aug 07 '22 at 22:20
  • @jsotola - the patent holder apparently is Sony.. good luck to the OP. – Wesley Lee Aug 07 '22 at 22:36
  • 1
    A patent is by definition "open source". But in exchange for disclosing the information, the patent holder gets exclusive rights to sell or license the IP for a period of time. So I doubt you'd get into any direct trouble by publishing your design, but nobody would be able to use it without getting a license from Sony. This violates the "free to use" and "free to sell" principles of OSH. – Dave Tweed Aug 07 '22 at 23:00
  • 1
    Yes talk to a lawyer in the country where you reside. If that patent hasn't already expired, it may soon. And since it may not be patented in all jurisdictions where OSH does business, maybe you can still share it there. I don't know. So talk to a lawyer. – user57037 Aug 07 '22 at 23:20
  • Exactly which parts of the 'functionality' of your device are covered by this patent, and in what way is the 'method and system' the same? – Bruce Abbott Aug 07 '22 at 23:52
  • The people who make embodiments of the patented invention using your design need a license. You do not need a license unless you're building it. – user1850479 Aug 08 '22 at 00:41

1 Answers1

2

(This is not legal advice).

You are not building the item yourself, but you may be encouraging others to build it. If the item is patented (in the country where it is being built), you might have some liability.

To infringe on a patent, the infringer would have to include all the elements of at least one claim. This is hard to determine, but if the patent is just about the general field of your device, it is unlikely there is infringement (and possible that those very broad claims are invalid based on prior art).

Note that the claims on the Japanese application are slightly different from the ones on the issued US Patent.

Examples of where your system might not actually infringe are the phrase "including audibly displaying audio data present in the HDMI data" in the Japanese application -- the description doesn't describe what "Audibly displaying" means -- it is even possible this invalidates the patent.

jp314
  • 18,395
  • 17
  • 46