university and industry collaborations ken leppert attorney microsoft legal and corporate affairs...
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University And Industry CollaborationsUniversity And Industry Collaborations
Ken Leppert AttorneyMicrosoft Legal and Corporate Affairs
Ken Leppert AttorneyMicrosoft Legal and Corporate Affairs
GoalsGoals
CollaborationDiscuss modes of collaboration between MSR and academia
Tech Transfer of Software CodeOutline some of concerns of industry with regard to code tech transfer
Identify some challenges for university-to-industry tech transfer of code
Propose some measures universities can take to increase likelihood of successful tech transfer of code
CollaborationDiscuss modes of collaboration between MSR and academia
Tech Transfer of Software CodeOutline some of concerns of industry with regard to code tech transfer
Identify some challenges for university-to-industry tech transfer of code
Propose some measures universities can take to increase likelihood of successful tech transfer of code
Modes Of CollaborationModes Of Collaboration
Contrasting Missions And CulturesContrasting Missions And Cultures
Universities Universities
MissionMissionAdvance the state of the Advance the state of the artart
Provide learning Provide learning environment in which environment in which faculty and students can faculty and students can flourishflourish
Enhance reputation in Enhance reputation in the fieldthe field
Culture/EnvironmentCulture/EnvironmentNon-competitive Non-competitive environment environment
Information Information sharing/disseminationsharing/dissemination
Universities Universities
MissionMissionAdvance the state of the Advance the state of the artart
Provide learning Provide learning environment in which environment in which faculty and students can faculty and students can flourishflourish
Enhance reputation in Enhance reputation in the fieldthe field
Culture/EnvironmentCulture/EnvironmentNon-competitive Non-competitive environment environment
Information Information sharing/disseminationsharing/dissemination
IndustryIndustry
MissionMissionDeliver value to the Deliver value to the marketplacemarketplace
Survive and prosper (stay Survive and prosper (stay one step ahead; gain one step ahead; gain market share; make a market share; make a profit)profit)
Culture/EnvironmentCulture/EnvironmentCompetitive landscape Competitive landscape
Requires protection of Requires protection of information in core information in core competenciescompetencies
IndustryIndustry
MissionMissionDeliver value to the Deliver value to the marketplacemarketplace
Survive and prosper (stay Survive and prosper (stay one step ahead; gain one step ahead; gain market share; make a market share; make a profit)profit)
Culture/EnvironmentCulture/EnvironmentCompetitive landscape Competitive landscape
Requires protection of Requires protection of information in core information in core competenciescompetencies
MSRMSR
Modes Of CollaborationModes Of Collaboration
Gifts
RFPs
Fellowships, scholarships
Materials available on MSR website
Research platforms/RDKs
Sponsored research
Technical collaboration
Tech transfer
Gifts
RFPs
Fellowships, scholarships
Materials available on MSR website
Research platforms/RDKs
Sponsored research
Technical collaboration
Tech transfer
Easing Tech Transfer Of Software CodeEasing Tech Transfer Of Software Code
Tech Transfer Of Software CodeTypical University goalsTech Transfer Of Software CodeTypical University goals
Monetize technological innovation through licensing for a fee Build relationships with industry to bolster teaching and research programs. (E.g.: research collaboration)Increase chances of receiving gifts or sponsored research fundsBolster reputation of university and its faculty in the academic community. (E.g.: “Our code was picked up by XYZ Co.”)
Monetize technological innovation through licensing for a fee Build relationships with industry to bolster teaching and research programs. (E.g.: research collaboration)Increase chances of receiving gifts or sponsored research fundsBolster reputation of university and its faculty in the academic community. (E.g.: “Our code was picked up by XYZ Co.”)
Tech Transfer Of Software CodeIndustry concernsTech Transfer Of Software CodeIndustry concerns
Potential risks associated with incorporating a third-party component
Software companies very concerned about the origin of any code to be transferred
Potentially devastating effects from incorporating a component subject to
A claim of infringement; Or
Licensing terms that may subject an entire product to a reach-through
Stakes are high: A single problematic component could result in a “stop-ship” (plus the costs of litigation and any damages)
Potential risks associated with incorporating a third-party component
Software companies very concerned about the origin of any code to be transferred
Potentially devastating effects from incorporating a component subject to
A claim of infringement; Or
Licensing terms that may subject an entire product to a reach-through
Stakes are high: A single problematic component could result in a “stop-ship” (plus the costs of litigation and any damages)
Tech Transfer Of Software CodeTypical problems/challengesTech Transfer Of Software CodeTypical problems/challenges
Sometimes, lack of awareness of IP and licensing issues. Typical issues
Privity of contract with students and other third partiesOrigin of code contributions – “Borrowing” of third-party codeReach-through license terms in copyleft licenses (both inbound and outbound)
ResultIndustry reluctant to assume code.If code is transferred, large overhead to conduct due diligenceSpinoffs/incubated startups valued less by investors after due diligence uncovers dubious code pedigreePotential liability for university
Sometimes, lack of awareness of IP and licensing issues. Typical issues
Privity of contract with students and other third partiesOrigin of code contributions – “Borrowing” of third-party codeReach-through license terms in copyleft licenses (both inbound and outbound)
ResultIndustry reluctant to assume code.If code is transferred, large overhead to conduct due diligenceSpinoffs/incubated startups valued less by investors after due diligence uncovers dubious code pedigreePotential liability for university
Five Proactive Measures To Promote Tech Transfer Of CodeFive Proactive Measures To Promote Tech Transfer Of Code
Privity of Contract. Make sure everyone involved in a project is under some kind of written agreement so that the university’s ownership is not clouded by uncertainty Development Processes. Implement an organized software development process. E.g.
Code check-in and version control from the beginningTagging code with metadata about origin
Internal Awareness. Build awareness of IP and licensing issues among everyone involved in project.Appropriate Licensing. Employ a licensing model that enables tech transfer Policies. Put in place policies that memorialize best practices for all of the above
Privity of Contract. Make sure everyone involved in a project is under some kind of written agreement so that the university’s ownership is not clouded by uncertainty Development Processes. Implement an organized software development process. E.g.
Code check-in and version control from the beginningTagging code with metadata about origin
Internal Awareness. Build awareness of IP and licensing issues among everyone involved in project.Appropriate Licensing. Employ a licensing model that enables tech transfer Policies. Put in place policies that memorialize best practices for all of the above
Licensing ModelsLicensing Models
Many licensing models Public Domain – Work has lapsed or been dedicated to the public; no IP protection. Proprietary - An outbound licensing model that typically grants only narrow licenses to end users to use the product and associated IPOpen Source – Many variations; two main types:
“BSD-style” – Broad rights to copy & distribute code; only requirement is attribution; licensee can incorporate BSD-type code into its proprietary code.“Copyleft” – GPL, LGPL, MPL – If you incorporate code covered by a copyleft source license into an existing project, you may be required to grant similar rights to all of your code/IP to all third parties.
What does this mean for tech transfer? Uncertainties surrounding copyleft model may discourage tech transfer, since industry reluctant to touch copyleft source with reach-through terms Possible to be open without use of copyleft license. Use of other open source licensing models like the BSD (or a standard commercial license) is more likely to allow use by industryIllustration
Many licensing models Public Domain – Work has lapsed or been dedicated to the public; no IP protection. Proprietary - An outbound licensing model that typically grants only narrow licenses to end users to use the product and associated IPOpen Source – Many variations; two main types:
“BSD-style” – Broad rights to copy & distribute code; only requirement is attribution; licensee can incorporate BSD-type code into its proprietary code.“Copyleft” – GPL, LGPL, MPL – If you incorporate code covered by a copyleft source license into an existing project, you may be required to grant similar rights to all of your code/IP to all third parties.
What does this mean for tech transfer? Uncertainties surrounding copyleft model may discourage tech transfer, since industry reluctant to touch copyleft source with reach-through terms Possible to be open without use of copyleft license. Use of other open source licensing models like the BSD (or a standard commercial license) is more likely to allow use by industryIllustration
Comparison Of Some Open Source LicensesComparison Of Some Open Source Licenses
BSD CodeBSD Code
MPL CodeMPL Code
GPL CodeGPL Code
+
+
+
Combined Combined WorkWork
CombinedCombined WorkWork
WorkWork
CombinedCombined
Company not required Company not required to grant any particular to grant any particular license rights.license rights.
““Separate” non-MPL Separate” non-MPL files can be licensed files can be licensed under other terms. under other terms. Company could be Company could be required to apply MPL required to apply MPL terms to any files that terms to any files that contain MPL code. contain MPL code.
Risk that company Risk that company could be required to could be required to license license ENTIREENTIRE work work under the GPL.under the GPL.
CompanyCompany CodeCode
CompanyCompany CodeCode
CompanyCompany CodeCode
Recap On Licensing Approach Research-Only versus CommercialRecap On Licensing Approach Research-Only versus Commercial
Licensing model should be appropriate for the goals of the project
Research useCopyleft licenses such as GPL may preclude use by industry
Licenses such as BSD pose fewer roadblocks to dissemination to industry
Commercial useMost of the time, a non-exclusive license is sufficient
Broad commercial license; right to sublicense within channel
Irrevocable rights once paid
Background IP covered to the extent use of licensed technology would infringe
No annuities; one-time lump sum payment
Flexibility to ship, or not ship, in products
Some representations and warranties; Not “AS IS”
No copyleft source contamination or other dependencies
Licensing model should be appropriate for the goals of the project
Research useCopyleft licenses such as GPL may preclude use by industry
Licenses such as BSD pose fewer roadblocks to dissemination to industry
Commercial useMost of the time, a non-exclusive license is sufficient
Broad commercial license; right to sublicense within channel
Irrevocable rights once paid
Background IP covered to the extent use of licensed technology would infringe
No annuities; one-time lump sum payment
Flexibility to ship, or not ship, in products
Some representations and warranties; Not “AS IS”
No copyleft source contamination or other dependencies
© 2005 Microsoft Corporation. All rights reserved.This presentation is for informational purposes only. Microsoft makes no warranties, express or implied, in this summary.