Open source science: balancing the benefits and risks

26 June 2020

Open source science involves an owner of intellectual property (IP) sharing their IP at no cost to the user, allowing IP owners to contribute to (usually) benevolent objectives while retaining ownership of their IP.

Open source science has the potential to be a great equaliser because it encourages access to IP and information without the financial barriers. It is particularly beneficial for developing countries where there may be gaps in research capabilities, and also has the potential to make IP more rapidly available than users seeking access to IP through a compulsory licensing procedure, if such a procedure is available in their country (see our previous commentary on the compulsory licensing rights under the Australian Patents Act 1990 (Cth) here).

If an IP owner wants to make available certain IP on an open basis, it can make a public pledge to do so. Examples of this include the:

The text of a pledge generally includes a licence grant, setting out the terms on which the IP owner is willing to license their IP.

The rise of open source science during COVID-19

As the world responds to the impact of COVID-19, international collaboration and the sharing of information has become much more important. Open source science is playing a key role in this collaboration, helping communities all over the world access life-saving IP rights such as research data, designs, patents and plans.

The United Nations Educational, Scientific and Cultural Organisation supports the use of open source science. In March, UNESCO Director-General Audrey Azoulay called on governments to reinforce scientific cooperation and to integrate open science within their research programs.

Open source science has been crucial during the fight against COVID-19. For example, the research community has created open data resources such as the:

Human Coronaviruses Data Initiative
COVID-19 Open Source Dashboard
Wikiproject COVID-19
COVID Track Project

In January, a team of Australian researchers at the Peter Doherty Institute for Infection and Immunity provided the first genome of the SARS-CoV-2 virus to the World Health Organisation, which distributed the samples to research labs around the globe and published the genome. The genetic map was made freely available for access to all. This publication allowed the virus and its mutations to be sequenced over 3,000 times, contributing significantly to vaccine research.

Given the success of this initial use of open source science, an international coalition of scientists and lawyers called on organisations to make their patents freely available for the purpose of ending the COVID-19 pandemic by signing the Open COVID Pledge.

The Pledge is implemented through the Open COVID License, which details the terms and conditions under which intellectual property is made available. The licence allows for anyone to use the patent rights and copyrights of the pledgor for the purposes expressed in the licence up until a year after the World Health Organization declares COVID-19 is no longer a pandemic. In doing so, the IP owner grants a user a licence to make, use, sell and otherwise exploit any technologies that can be used in the fight against COVID-19.

The licence is non-exclusive, royalty-free, worldwide, fully paid-up, and non-sub licensable. Of interest, the Open COVID License does not contain audit rights for the IP owner, registration requirements for the licensee, or obligations on the licensee to make their learnings public. However, IP owners wishing to be involved with the Open COVID Pledge can customise its license terms or draft their own terms to include such protections.

Further examples of open source science

While open source science has gained more prominence during the COVID-19 pandemic, many organisations were already publishing their intellectual property on open source databases.

American electric vehicle and clean energy company, Tesla, Inc. made a patent pledge in 2014 to provide its intellectual property free of charge. The pledge states that Tesla ‘will not initiate a lawsuit against any party for infringing a Tesla Patent through activity relating to electric vehicles or related equipment for so long as such party is acting in good faith’.

In a statement on 12 June 2014, CEO Elon Musk stated that the decision was made ‘in the spirit of the open source movement, for the advancement of electric vehicle technology’. Tesla keeps a patent register of the available intellectual property on its website and sets out the terms of the licences. For example, it lists the definition of ‘acting in good faith’ and the limits of the licence.

In 2013, Google issued its ‘Open Patent Non-Assertion Pledge’ allowing ‘the free use of certain of its patents in connection with Free or Open Source Software’. Google states that it made the commitment because it ‘believes that Free or Open Source Software is a very important tool for fostering innovation’.

Both the Tesla and Google pledges include a term to the effect that any transferee of the patents will provide equal patent pledges.

More recently, Toyota announced it will grant royalty-free licences on nearly 24,000 of its patents for vehicle electrification-related technologies. In doing so, Toyota aims to further promote the widespread use of electrified vehicles, including hybrid vehicles, and contribute to the global efforts of addressing climate change. Toyota’s provision of royalty-free licenses can be viewed as a variation on the open source model. Toyota retains more control over its IP in comparison to the Tesla or Google patent pledges because those who wish to use a patent must contact Toyota to negotiate the specific licensing terms and conditions.

Key legal issues and risks for IP owners

IP owners considering participation in the open source science movement need to ensure that their objectives (which may be benevolent, or otherwise may be directed at accelerating the uptake of a particular technology) are balanced with a sensible approach to managing legal risk.

In particular, IP owners should consider the following before engaging in open source science:

ensuring the IP owner has the right and authority to license the particular IP;
clearly defining the elements of the licence grant terms, including:
- the particular IP being licensed
- the licence period
- the territory of the licence
- the permitted purpose for which the IP may be used
- whether the licence include sublicense rights
- ownership of improvements to the licensed IP
- whether there is an obligation on the licensee to make improvements and other results available to the IP owner (and perhaps also other licensees of the IP)
- termination rights and what’s required of the licensee on termination
ensuring that liability, indemnity and insurance issues are carefully considered (including whether any warranties are given or excluded) and drafted appropriately in the licence;
considering statutory obligations that may apply and how they may impact on the licence terms; and
ensuring that the licence includes rights for the IP owner to monitor and audit the use of the intellectual property to ensure that it is being used within the terms of the licence.