Shaping an Intellectual Property Policy for EECS

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Shaping an Intellectual Property Policy for EECS

• David E. Culler

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Outline

• EECS IP Mantra
• Current Problems
• Background
• Discussion

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EECS Open Mantra ---- IMPACT

• Were interested in creating billion
  industries, not making a few bucks on licensing,
  so put fundamental work in the open.
• BSD Unix, Spice, RISC, RAID, Sprite, Magic,
  Espresso, Postgress, NOW, Scalapack, Telegragh,
  TinyOS,
• Established companies pick it up, start ups
  happen
• Licensing agreements and fees discourage
  adoption they encourage industry to work around
  your innovations.
• No University (especially not ours) has made
  significant on IT licensing.
• Goodwill comes back to EECS in industry donations
  into research and education
• 10-20 M/yr ( vs 1-2 M for entire TLO)

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So whats the problem?

• Open Shoe doesnt always fit
• More appropriate for systems than devices
• Confluence vs single major investment
• Dont have a good boiler plate for non-open
  agreements
• Many variations on the theme in different centers
• Many companies dont get it
• Why should I support the work, if everybody gets
  it?
• gt early access, special terms, deliverables,
  exclusivity?
• Most of our membership agreements have not been
  approved by the University
• SPO is the only office than can negotiate
  contracts and grants
• Gifts vs grants vs contracts
• Campus looking at Gifts and will start charging
  overhead
• Our VIF agreement is inadequate
• Gift confusion, onerous employee IP terms
• Increasing federal pressure to limit publication
  code
• ITAR export restrictions

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Background
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IPRO membership

• Three tiers
• BEECSA (125K)
• All the pubs, access, plus VIF
• Research Partner (50K to any researcher or
  center)
• Recognizes the natural relationship
• Member (7.5 k)
• Information, visibility and recruiting
• No explicit IP terms, except VIF
• VIF must sign UCB Patent Acknowledgement
• Written for UC employees
• UC owns IP, royalty sharing
• No recognition of industrial employer
• OTL will negotiate, but unwilling to offer any
  blanket policy
• Membership in any affiliate center gt IPRO too
• Facilitate and collaborate with collection of
  centers

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Example Center BSAC benefits

• Industrial Members have early (pre-publication)
  and frequent access to all BSAC research results.
  
• intensive 3-day semiannual private research
  review
• member-only website, bi-annual UC Berkeley EECS
  Industrial Liason meeting,
• Twice-annual publication of a comprehensive
  research report
• on-campus access
• Industrial Members are offered various options
  of privileged licensing of patents which derive
  from BSAC research.

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Example Center BWRC

• forging deep relationships with leading wireless
  companies so that university researchers can
  benefit from industrial experience and industry
  can more rapidly transfer new technologies.
• VIFs will be formally included into the Center
  research staff and will be required to sign the
  University of California Patent Policy .
• Bi-annual research reviews will be open only to
  Participating, Platinum and Associate Member
  companies. 
• The Center will publicly disseminate research
  results as rapidly as possible.  Participating,
  Platinum and Associate Member companies will be
  given preferential access to new research results
  posted on the web site for approximately 6 months
  prior to release for public access. 
• Center patents are expected to be rare  Patents
  resulting from inventions by one or more Center
  research staff members or VIFs and one or more
  employees of a Member Company who are not VIFs,
  will be jointly owned by the University of
  California and the Member Company.

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Toward an openness regime

• BWRC created stir when the announced their open
  policy which was typical of CS and much of EE
  for 15 years.
• Resulted in Hodges Agreement (OTT 2000-02
  Operating Agreement) 3-year pilot and only in
  EECS right to negotiate a royalty-free
  commercial license
• Later made permanent
• Former head of OTL wrote public on the mistake
  of not licensing TCP/IP
• Contradicted in later op-ed piece by President
  Atkinson
• Creation of To each its own (TEIO) agreement
• IBM visitor (Bill Tetzlaff) balked at VIF
• 3 previous VIFs spent a year negotiating and left
  before done
• whats your is yours, ours is ours, joint is
  joint agreement

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OTT 2000-02 Presidents Engineering Advisory
Council

• It was observed that the rapid rate of
  technological change in the engineering fields of
  electronics, communications technology, computer
  hardware and software results in new products
  with a typical lifetime of a few years or less.
• Competitive success rarely is based upon the
  statutory protection of intellectual property as
  requirements for conformance with industry-wide
  standards reduce the value of proprietary
  technology.
• Rapid product development and early market entry
  with innovative products are the keys to market
  leadership and successful products.

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Open Collaborative Research Regime

• CITRIS defined a policy of open collaboration
• Formation of the Intel Lablet required
  translating this into practice.
• Year of negotiation with Intel, UCOP, SPO,
  VC-research
• Complex mix of tax law and contract law
• Key concept create an explicit boundary of
  openness on each project within master agreement
• Protect against reach-thru in both directions
• Non-exclusive royalty-free to all for research,
  non-exclusive reasonable commercial
• BSD open source
• UC / Company / Joint patent appendix (TEIO)
• Streamlined Research Project Document process
• One-page, clear responsibility, time-outs
• UC verifies facilities use and no-conflict with
  grants
• Company can identify proprietary technology
• Pub notification through process (catch problems
  before final)

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CITRIS Regime

• Largely an adoption of OCR
• No local industry resources, company people as
  VIFs
• Development of a CITRIS VIF Patent Ack
• Less focus on joint work, joint pub
• Non-exclusive Royalty-Free Research License
• Broader Commercial Terms
• Reasonable
• Typically non-exclusive
• Exclusive where it make more sense
• Tiers of membership and benefits
• Founding Platinum (1.5 M / yr)
• Board seat, Named office, any center, Company
  day, on-line instructional materials
• Associate (150 K / yr)
• Early access, Private web site, research retreat,
  faculty access
• Collaborators

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Berkeley CTR for Analytical Biotechnology (CAB)

• OTL / SPO approved membership structure
• Usual benefits
• Pubs, reviews, faculty access
• Rights to internal use
• Right to sponsor dedicated research projects
• Novel Benefits
• Explicit early access to IP
• Joint SBIR/STTR
• Focus on confidentiality
• Time-limited royalty-bearing nonexclusive
• Limited to members
• Interest by one gt license to all on same terms
• No interest gt exclusive permitted (CAB or
  non-CAB)
• Recognizes and defers indirect costs

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Privileges vs Mission Tension

• Increasingly EECS is collaborating with a new set
  of companies.
• Desire for a immediate return on research
  investment
• Convince the business side
• Publication restrictions
• to achieve early access?
• Favorable licensing terms (exclusive)
• Common in many other areas
• Deliverables
• And they want to make it a gift
• No overhead (soon to be 15) instead of 49
• Tax benefits

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Consulting IP?

• Faculty walk a tightrope in consulting agreements
• Protecting corporate proprietary technology
• Protecting against restrictions on publishing or
  inclusion of UC technology
• Ability to claim rights on external IP

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The Discussion

• Should we continue to embrace and codify our
  open approach?
• Should we develop the ROI case for supporting
  open work?
• Key elements?
• Should we develop a non-open regime boiler plate?
• Should we drive a more balanced VIF agreement?
• What issues are critical to industry?