Blockchain Defensive Patent License v1.0
NOTICE: ALL RIGHTS IN LICENSED PATENTS (as defined below) PROVIDED UNDER THIS BLOCKCHAIN DEFENSIVE PATENT LICENSE (“BDPL”) ARE SUBJECT TO ALL OF THE CONDITIONS AND LIMITATIONS SET FORTH BELOW. MAKING, USING, SELLING, OFFERING FOR SALE, IMPORTING, OR DISTRIBUTING PRODUCTS OR SERVICES EMBODYING THE LICENSED PATENTS, OTHER THAN AS EXPLICITLY AUTHORIZED UNDER THIS LICENSE OR PATENT LAW, IS PROHIBITED.
1 LICENSE GRANT
Subject to the conditions and limitations of this License, Licensor hereby grants and agrees to grant to any BDPL User (as defined in Section 7.6) who follows the procedures for License Acceptance (as defined in Section 1.1) a worldwide, royalty-free, no-charge, non-exclusive, irrevocable (except as stated in Sections 2(e) and 2(f)) license, perpetual for the term of the relevant Licensed Patents, to make, have made, use, sell, offer for sale, import, and distribute Licensed Products and Services that would otherwise infringe any claim of Licensed Patents. Licensor’s obligation to grant Licenses under this provision ceases upon the arrival of any applicable Discontinuation Date, unless that Date is followed by a subsequent Offering Announcement.
1.1 LICENSE ACCEPTANCE
In order to accept this License, Licensee must qualify as a BDPL User (as defined in Section 7.6) and must contact Licensor via the information provided in Licensor’s Offering Announcement to state affirmatively that Licensee accepts the terms of this License. Licensee must also communicate the URL of its own Offering Announcement (as defined in Section 7.12) and agree to accepting the License to all Licensor’s Licensed Patents. There is no requirement that the Licensor respond to the Licensee’s affirmative acceptance of this License.
1.2 CYBERSECURITY COVENANTS
In case of an Offering Announcement, the Licensor and in case of a Discontinuation Announcement, the BDPL User, each hereby covenants to:
i. keep its contact information for any purposes updated, current, accurate and true at all time during the term of this BDPL;
ii. post such information to a publicly accessible website that is and remains unblocked, un-manipulated or digitally un-attacked by any public or private Third Party;
iii. ensure that such information and such website shall remain unaltered or unmodified without Licensor’s or BDPL User’s (as relevant) authorization or un-deleted; and
iv. in case such information or website has been altered or modified without Licensor’s or BDPL User’s (as relevant) authorization or deleted, Licensor or BDPL User (as relevant) shall ensure that the integrity of such information is restored as soon as reasonably practicable to allow Licensor or BDPL User (as relevant) to remain in compliance with this License and also restore or replace such website as soon as reasonably practicable to allow Licensor or BDPL User (as relevant) to remain in compliance with this License.
2 LICENSE RESTRICTIONS
Notwithstanding the foregoing, this License is expressly subject to and limited by the following restrictions:
(a) No Sublicensing. This License does not include the right to sublicense any Licensed Patent of any Licensor.
(b) License Extends Solely to Licensed Patents in Connection with Licensed Products and Services. For clarity, this License does not purport to grant any rights in any Licensor’s copyright, trademark, trade dress, design, trade secret, other intellectual property, or any other rights of Licensor other than the rights to Licensed Patents granted in Section 2, nor does the License cover products or services other than the Licensed Products and Services. For example, this License would not apply to any conduct of a Licensee that occurred prior to accepting this License under Section 1.1 (except as provided in Section 2(e) below).
(c) Scope. This License does not include Patents with a priority date or Effective Filing Date later than Licensor’s last Discontinuation Date that has not been followed by a subsequent Offering Announcement by Licensor.
(d) Future BDPL Users. This License does not extend to any BDPL User whose Offering Announcement occurs later than Licensor’s last Discontinuation Date that has not been followed by a subsequent Offering Announcement by Licensor.
(e) Revocation and Termination Rights. Upon the occurrence of any of the below conditions with respect to a particular Licensee, this License shall automatically terminate and/or be revoked with immediate effect with respect to the offending Licensee if, after the date of the offending Licensee’s most recent Offering Announcement:
i. Licensee, directly or indirectly, initiates and/or causes any initiation or materialization of (or allows to be initiated or caused to be initiated) whether individually or in collusion with each other or with any other Person, any Proceeding not including Defensive CounterClaims or Proceedings to compel performance or compliance with this License, against a BDPL User. For the avoid of any doubt, the definition of Proceeding includes any assertion of a Licensor’s or its Affiliates’ trade secrets against any other BDPL User in any form, jurisdiction and before any body; or
ii. Licensee during the term of this BDPL sells, mortgages, securitizes, grants any security interest(s) or collateral in, places into any form of trust, escrow or custodial arrangement, assigns, transfers, or grants an exclusive license for, otherwise disposes of or transacts in (whether through any transactions involving a Change of Control) or any attempt or offer to do such activities (collectively “Dispositions”), any Patent to any individual, Person or its Affiliate other than a BDPL User without expressly conditioning such Disposition on the relevant counter-party, the Recipient, creditor, beneficiary, successors-in-interest, individual or Person (collectively “Receiving Person”) continuing to accept and abide by all the terms of this License (and any of its subsequent revisions or versions), including but not limited to the revocation and termination rights under this Section, without permitting any changes to this License (or any of its subsequent revisions or versions) by such Receiving Person.
iii. Licensee is or becomes licensed to make, have made, use, sell, offer for sale, import, and/or distribute a Patent owned by or licensed to any Person (who is not a party or otherwise bound by this BDPL), and such Patent is or is likely to be enforced (such as the issuance of a cease & desist letter, letters or requests asking for settlement or royalty payments or the filing or initiation of any Proceedings) against a BDPL User;
iv. Licensee, directly or indirectly, colludes with, influences, suggests that, implies that, requests that and/or communicates with or through, in any manner through any means, directly or indirectly (or any attempt or offer to do the same), any Person or its Affiliate(s) such as a deterrence entity, Patent aggregating service, Patent pool service provider, Patent risk management services offering defensive or offensive Patent brokering, buying, acquisition, syndication, Patent intelligence and/or advisory services and/or any of such Person’s agents, consultants, employees, officers or directors, to initiate, file and/or bring (or any attempt to do same) anyProceeding of whatever nature (such as inter partes review, post grant review and covered business method challenges before the U.S. Patent Trial and Appeal Board or its successor or their respective functional equivalent in other jurisdictions) not including Defensive Counter Proceedings or Proceedings to compel performance or compliance with this License, against a BDPL User;
v. Licensee fails to provide 180 days prior notice on a publicly accessible website of any of Licensee’s creation, registration, filing for, and/or otherwise obtainment of (whether on a principal or agency basis) any protection of any intellectual property right (such as the filing of any patent application in any jurisdiction or creation of a software copyright or develop or research any trade secret) that in any manner reads on or describe, covers, relates to, includes, incorporates, modifies and/or improves the Licensed Patent granted to BDPL Users under this License;
vi. Licensee fails to provide 180 days prior notice on a publicly accessible website of any of Licensee’s purchase, acquisition, obtainment, becoming the beneficiary, holder or custodian of, and/or transacting in (whether on a principal or agency basis and whether through any transactions involving a Change of Control or in any bankruptcy or insolvency proceedings) or any attempt or offer to do such activities (collectively “Dispositions”), any Patent that in any manner reads on or describe, covers, relates to, includes, incorporates, modifies and/or improves the Licensed Patent granted to BDPL Users under this License;
vii. Licensee fails to bind any successors-in-interest or relevant Person or its Affiliate(s) to all of the terms of this License in the event of a Change of Control of Licensee or in the event that Licensee or its Affiliate(s) acquires any Person or its Affiliate(s);
viii. Licensee’s Patent granted under any of its Offering Announcement(s) as a Licensor has been acquired by a Third Party that does not research, develop, or produce Patent in the field of the Licensed Products and Services; and ix. Licensees entered or plans to enter into any transaction with any Affiliate or any other Person that would circumvent its obligations under this License (such as ensuring that all of its Patents have been duly licensed, as relevant, to all other parties to this License) or influencing or colluding with its Affiliate(s), or Third Person(s) to enforce Patent(s) which have been licensed to such Licensee against any BDPL User (excluding such Licensee). (f) Notwithstanding the termination or revocation of the offending Licensee’s License under (e) above, all licenses granted by the offending Licensee to the other BDPL Users under this License shall remain valid and persisting and the offending Licensee shall not have the right to terminate such Licenses so granted to such parties. (g) Optional Conversion to FRAND Upon Discontinuation. Notwithstanding any other provision in this License, as of any particular Licensee’s Discontinuation Date, Licensor has the right to convert the License of that particular Licensee from one that is royalty-free and no-charge to one that is subject to Fair, Reasonable, And Non-Discriminatory (FRAND) terms going forward. No other terms in the license may be altered in any way under this provision.
3 VERSIONS OF THE LICENSE
(a) New Versions
The Blockchain Defensive Patents Initiative or its Affiliate may from time to time modify or publish new versions of this License to manage developments caused by emerging technologies. Each version will be given a distinguishing version number.
(b) Effect of New or Revised Versions
Each version is given a distinguishing version number. Subject to Section 7.12, if Licensor specifies in its Offering Announcement that it is offering a certain numbered version of the BDPL “or any later version”, Licensee has the option of following the terms and conditions either of that numbered version or of any later version published by one of the license stewards. Subject to Section 7.12, if Licensor does not specify a version number of the BDPL in its Offering Announcement, Licensee may choose any version ever published under 3(a) above.
4 DISCLAIMER OF CLAIMS RELATED TO PATENT VALIDITY & NON-INFRINGEMENT
Licensor makes no representations and disclaims any and all warranties as to the validity of the Licensed Patents or the products or processes covered by Licensed Patents do not infringe the patent, copyright, trademark, trade secret, or other intellectual property rights of any other party.
5 DISCLAIMER OF WARRANTIES
UNLESS OTHERWISE MUTUALLY AGREED TO BY THE PARTIES IN WRITING, LICENSOR OFFERS THE PATENT LICENSE GRANTED HEREIN “AS IS” AND MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE LICENSED PATENTS OR ANY PRODUCT OR SERVICE EMBODYING ANY LICENSED PATENT, EXPRESS OR IMPLIED, STATUTORY OR OTHERWISE, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF TITLE, MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT, OR THE PRESENCE OR ABSENCE OF ERRORS, REGARDLESS OF THEIR DISCOVERABILITY. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OF IMPLIED WARRANTIES, IN WHICH CASE SUCH EXCLUSION MAY NOT APPLY TO LICENSEE.
6 LIMITATION OF LIABILITY
LICENSOR SHALL NOT BE LIABLE FOR ANY DAMAGES ARISING FROM OR RELATED TO THIS LICENSE, INCLUDING INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES, WHETHER ON WARRANTY, CONTRACT, NEGLIGENCE, OR OTHERWISE, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES PRIOR TO SUCH AN OCCURRENCE.
If any provision of this License shall be found invalid or unenforceable, the remainder of this License shall be interpreted so as best to reasonably effect the intent of the parties.
6B. AMENDMENTS & WAIVERS
Any term or provision of this License may be amended, and the observance of any term of this License may be waived, only by a writing signed by the party to be bound. The waiver by a party of any breach or default in performance shall not be deemed to constitute a waiver of any other or succeeding breach or default. The failure of any party to enforce any of the provisions hereof shall not be construed to be a waiver of the right of such party thereafter to enforce such provisions.
6C. CONFIDENTIAL INFORMATION
(a) Each party agrees that all of the information disclosed by any other party (“the Discloser”) to another party (“the Recipient”), including but not limited to information learned by the Recipient from the Discloser’s employees, agents, independent contractors, officers or board members, that relates to the Discloser’s business model(s), services, products, designs, business plans, business opportunities, finances, research, development, technology, know-how, intellectual properties registered or unregistered, Patents, personnel or Third Party confidential information disclosed to the Recipient by the Discloser, all information which has or could have commercial value or other utility in the business in which the Discloser is engaged or contemplates engaging or the unauthorized disclosure of which could be detrimental to the interests of the Discloser, whether or not such information is identified by the Discloser, and all derivatives, improvements, modifications and enhancements to any of the above will be considered and referred to collectively in this License as “Confidential Information”. Confidential Information also includes like Third Party information which is in the Discloser’s possession under an obligation of confidential treatment.
(b) the Recipient agrees to protect the Discloser’s Confidential Information, using at least the same degree of care that it uses to protect his, her or its own confidential and proprietary information of similar importance, but no less than a reasonable degree of care. the Recipient agrees to use the Discloser’s Confidential Information for the sole purpose of exercising his, her or its rights under the grant in Section 1 and complying with his, her or its respective obligations under this License. the Recipient shall not disclose, publish, or disseminate Confidential Information to anyone other than the Discloser’s employees, authorized agents and contractors who have a need to know in order to assist the Recipient in his, her or its compliance with this License and who are also bound by a written confidentiality agreement. the Recipient agrees not to use Confidential Information for any other purpose or for his, her or its own or any Person’s benefit without the express prior written consent of an authorized representative of the Discloser. the Recipient may disclose Confidential Information to the extent required by law, including but not limited to, when required in connection with a judicial, administrative or governmental proceeding, provided the Recipient makes reasonable efforts to give the Discloser notice of such requirement prior to any such disclosure and take reasonable steps to obtain protective treatment of the Confidential Information. the Recipient further agrees not to cause the transmission, removal, download or transport of tangible embodiments of, or electronic files containing Confidential Information from the Recipient’s places of business (including servers (located in the cloud or otherwise) or online digital communication channels), or otherwise appropriate same, without the prior written approval of the Discloser.
(c) the Recipient shall return, deliver and assign to the relevant the Discloser all records, regardless of medium containing the Licensed Patent owned or licensed to the Discloser.
6D. MAINTENANCE OF PATENT
Licensor shall have the sole and exclusive right, in its absolute discretion, to exercise complete control over the Licensed Patent which it has licensed hereunder, including, but not limited to, the right to apply for, prosecute, or cause the issuance, amendment, abandonment, maintenance, re-examination or reissue of any Patents included within the Licensed Patent.
6E. ATTORNEYS FEES
In any Proceeding in which any BDPL User incurs any Attorney’s Fees against another Licensee that is or becomes non-compliant with any term of this License or any of the conditions in Section 2(e) above, such BDPL User is entitled to recover from such offending Licensee all Attorney’s Fees actually incurred in:
(i) prosecuting or defending any Proceeding brought or filed by such offending Licensee, its Affiliate(s) or their respective agents (actual or constructive), contractors, related Third Parties, employees, officers and directors or any other Persons acting in collusion or in concert therewith;
(ii) prosecuting any Defensive Counter Proceeding(s) in the Proceedings in (i) above; and
(iii) prosecuting any Proceeding against such offending Licensee to compel its compliance, and/or performance of this License.
i. with respect to a person other than an individual: any corporation, firm, partnership or other entity, whether de jure or de facto, which directly or indirectly owns, is owned by or is under common ownership with a party to this Agreement to the extent of at least fifty percent (50%) of the equity, voting rights, securities or other rights (or such lesser percentage which is the maximum allowed to be owned by a foreign corporation in a particular jurisdiction) having the power to vote on or direct, influence, control or manipulate the affairs of the entity and any person, firm, partnership, corporations or other entity actually controlled by, controlling or under common control with a party to this Agreement, in all cases at any time before, during or after becoming a party to this Agreement; or
ii. with respect to an individual: each other member of such individual’s Family (as defined in last paragraph below);
(a) any Person that is directly or indirectly controlled by such individual or one or more members of such individual’s family;
(b) any Person in which such individual or members of such individual’s family hold (individually or in the aggregate) a Material Interest; and
(c) any Person with respect to which such individual or one or more members of such individual’s family serves as a director, officer, manager, partner, executor, or trustee (or in a similar capacity); or
iii. with respect to any Person:
any Person, indirectly or directly, acting in concert, collusion, collaboration, common design, under the influence, control, direction and/or advice of any Third Party or a party to this Agreement.
For purposes of this definition, (a) the “Family” of an individual includes (i) the individual, (ii) the individual’s spouse and former spouse (whether legally designated as spouse or otherwise), (iii) any other natural person who is related to the individual or the individual’s spouse within the second degree, and (iv) any other natural person who resides with such individual, and (b) “Material Interest” means direct or indirect beneficial ownership voting securities or other voting interests representing at least 5% of the outstanding voting power of a Person or equity securities or other equity interests representing at least 5% of the outstanding equity securities or equity interests in a Person. 7.2A ATTORNEY’S FEES
“Attorney’s Fees” means all attorney’s fees, retainers, court costs, transcript costs, fees of experts, witness fees, travel expenses, duplicating costs, printing and binding costs, phone/internet/cable charges, courier fees and all other disbursements or expenses of the types customarily incurred in connection with prosecuting, defending, preparing to prosecute or defend, investigating, being or preparing to be a witness in, or participating in (including on appeal) any Proceeding.
7.2B CHANGE OF CONTROL
“Change of Control” means with respect to a party or Person as relevant:
i. the direct or indirect acquisition of either:
a) the majority of the voting stock of such party or Person as relevant or
b) all or substantially all of the assets of such party or Person as relevant, by another entity in a single transaction or series of related transactions; or
ii) such party or Person as relevant is merged with, or into another Person.
7.2 DEFENSIVE COUNTER PROCEEDING
“Defensive Counter Proceeding” means any Proceeding against a BDPL User, its Affiliate(s) or their respective agents (actual or constructive), contractors, Persons, employees, officers and directors or any other Persons acting in collusion or in concert therewith (“Aggressor Parties”), made in response to a pending prior Proceeding by said Aggressor Parties against the asserter of the Defensive Counter Proceeding.
7.3 DISCONTINUATION ANNOUNCEMENT
“Discontinuation Announcement” means a BDPL User’s announcement that:
(a) declares the BDPL User’s intent to discontinue offering to license its Licensed Patents under the BDPL, effective as of the Discontinuation Date; and
(b) contains the BDPL User’s contact information for licensing purposes; and
(c) at least 365 days prior to the Discontinuation Date is posted to a publicly accessible website; and
(d) at least 365 days prior to the Discontinuation Date is communicated reasonably and promptly, along with the URL of the website mentioned in subsection (c) of this provision, by the discontinuing BDPL User to every Licensor of a Patent to which the discontinuing BDPL User is a Licensee.
7.4 DISCONTINUATION DATE
“Discontinuation Date” means the date a BDPL User specifies in its Discontinuation Announcement to discontinue offering to license its Licensed Patents under the BDPL, which must be at least 180 days after the date of a Person’s most recent Discontinuation Announcement.
7.5 BDPL & LICENSE
“BDPL” and “License” mean the grant, conditions, and limitations herein.
7.6 BDPL USER
“BDPL User” means any Person that:
(a) has committed to offer a license to all of its Patents under the BDPL to every party to this BDPL (or its authorized revision(s)); and
(b) has declared such commitment by means of an Offering Announcement; and
(c) if the Person has made a Discontinuation Announcement, the Discontinuation Date has not yet occurred; and
(d) is fully compliant with Sections 2(e) with none of the conditions stated therein occurring, threatened to or anticipated to occur.
7.7 EFFECTIVE FILING DATE
“Effective Filing Date” is the effective filing date determined by the applicable patent office that issued the relevant Licensed Patent.
7.8 LICENSED PATENTS
“Licensed Patents” means any and all Patents (a) owned or controlled by Licensor; or (b) under which Licensor has the right to grant licenses without the consent of or payment to a Third Party (other than an employee inventor).
7.9 LICENSED PRODUCTS & SERVICES
“Licensed Products and Services” means any products, services or other activities of a Licensee that practice one or more claims of one or more Licensed Patents of a Licensor.
“Licensee” means any Person exercising rights granted by the Licensor under this License including all Affiliates of such Person.
“Licensor” means any Person with the right to grant licenses in Licensed Patents under this License, including any Affiliates of such Person.
7.12 OFFERING ANNOUNCEMENT
“Offering Announcement” means a Licensor’s announcement that:
(a) declares the Licensor’s commitment to offer this particular version of the Blockchain Defensive Patent Initiative Defensive Patent License (or its authorized revisions thereof) for all of its Patents to any BDPL User; and
(b) contains the Licensor’s contact information for licensing purposes; and
(c) is posted to a publicly accessible website that is and shall remain unblocked from any Persons.
An Offering Announcement is required to offer a Blockchain Defensive Patent Initiative License under this particular version of the BDPL or its authorized revisions thereof.
“Patent” means any right, whether now or later acquired, under any national or international patent law issued by a governmental body authorized to issue such rights. For clarity, this definition includes any rights that may arise in patent applications, utility models, granted patents, including, but not limited to, continuations, continuations-in-part, divisions, renewals, provisionals, results of any patent reexaminations, reissues and extensions thereof, but excluding design patents or design registrations.
“Person” means any legal person or entity, including without limitation any individual or natural person, corporation, partnership, joint venture, association, joint stock company, trust, unincorporated association, limited liability corporation, governmental entity, or other person or entity of similar nature.
“Proceeding” means any threatened, pending or completed action, suit, arbitration, alternate dispute resolution mechanism, administrative hearing or any other proceeding, in any jurisdiction, whether created by a claim, counterclaim, or cross-claim, whether civil, criminal, administrative (including any proceeding in the International Trade Commission or any post-grant proceedings such as inter partes review, post grant review and covered business method challenges before the U.S. Patent Trial and Appeal Board or its successor or their respective functional equivalent in other jurisdictions) or investigative and whether or not based on events occurring, or actions taken, before the relevant party becoming a party to this Agreement and any inquiry or investigation that could lead to and any appeal in or related to, any such action, suit, arbitration, alternative dispute resolution mechanism, hearing or proceeding. For the avoid of any doubt, the definition of Proceeding includes any assertion of a Licensor’s or its Affiliates’ trade secrets against any other BDPL User in any form, jurisdiction and before any body.
“Technology” means any and all present and future inventions, trade secrets, copyrights, moral rights, Patents, improvements, data, regulatory submissions and other intellectual property of any kind owned or controlled by, or licensed (with the right to sublicense) to a Person, party, BDPL User, Licensee or Licensor to this License, as relevant, without the consent of or payment to a Third Party (other than an employee inventor).
7.17 THIRD PARTY
“Third Party” means any Person other than Licensor, Licensee or their respective Affiliates.
This license has been adapted from the Defensive Patent License, DPL v1.1 available at https://defensivepatentlicense.org/license. We have made revisions to, comments and criticisms about such license under the doctrine of free speech in the digital media and fair use on a matter of critical public importance. The wording used in this License is generic legal terms available on the internet for free.
Example Offering Announcement should include contact information for other BDPL Users to provide notice to.
This Offering Announcement is issued by ______________ (“Licensor”). All capitalized terms herein have the meaning as defined in the applicable numbered version of the Blockchain Defensive Patent License.
Licensor hereby commits to offer all of its Patents under the Blockchain Defensive Patent License version 1.0 or greater (“License”) to any BDPL User. The Licensor shall refer to the License for the procedures on granting and accepting such License.
Licensor’s contact information is as follows: ________