[LEGAL-78] Contribution of code that uses a contributor's patent

• Type: Question
• Status: Closed
• Priority: Major
• Resolution: Not A Problem
• Assignee: Unassigned
• Reporter: Andrzej Bialecki
• Created: 13/Aug/10 10:12
• Updated: 13/Aug/10 19:26
• Resolved: 13/Aug/10 19:26

Description

I'm an Apache Lucene PMC member (and Lucene committer). I need instructions regarding a code contribution described in JIRA issue LUCENE-1812 .

Here's a short story of how that code came into being:

• I'm the original author of the patches attached to that issue, except for the modifications in the last version that were introduced by an IBM employee.

• I'm not affiliated with IBM in any way. I'm a EU citizen (Poland).

• a year back or so, I first read some published papers from IBM researchers on the subject, and then prepared from scratch (i.e. without looking at or using any IBM's code and without any communication or guidance from IBM) an implementation of this index pruning technique. At that time I wasn't aware that a patent existed that covers this technique. Then I contributed this code to ASF.

• on 23/May/2010 one of the researchers at IBM pointed out that this technique is covered by an IBM's patent.

• he then proceeded to introduce some modifications to the patch, and submitted this modified code as a JIRA attachment, marking it with "Grant license to ASF for inclusion in ASF works".

Now, my question is: is this sufficient for ASF to safely include this code in Lucene without the danger of being accused later of a patent infringement? Will a formal software grant solve this so that this work can be included, so that Lucene users can use it without infringing on this patent?

Issue Links

• blocks: LUCENE-1812 Static index pruning by in-document term frequency (Carmel pruning)