University And
Industry Collaborations
Ken Leppert
Attorney
Microsoft Legal and Corporate Affairs
Goals
Collaboration
Discuss modes of collaboration between
MSR and academia
Tech Transfer of Software Code
Outline some of concerns of industry with
regard to code tech transfer
Identify some challenges for university-toindustry tech transfer of code
Propose some measures universities can
take to increase likelihood of successful tech
transfer of code
Modes Of Collaboration
Contrasting Missions And Cultures
Universities
Industry
Mission
Advance the state of the
art
Provide learning
environment in which
faculty and students can
flourish
Enhance reputation in
the field
Culture/Environment
Non-competitive
environment
Information
sharing/dissemination
Mission
MSR
Deliver value to the
marketplace
Survive and prosper (stay
one step ahead; gain
market share; make a
profit)
Culture/Environment
Competitive landscape
Requires protection of
information in core
competencies
Modes Of Collaboration
Gifts
RFPs
Fellowships, scholarships
Materials available on MSR website
Research platforms/RDKs
Sponsored research
Technical collaboration
Tech transfer
Easing Tech Transfer
Of Software Code
Tech Transfer Of Software Code
Typical 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 funds
Bolster reputation of university and its
faculty in the academic community. (E.g.:
“Our code was picked up by XYZ Co.”)
Tech Transfer Of Software Code
Industry 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)
Tech Transfer Of Software Code
Typical problems/challenges
Sometimes, lack of awareness of IP and
licensing issues. Typical issues
Privity of contract with students and other third parties
Origin of code contributions – “Borrowing” of thirdparty code
Reach-through license terms in copyleft licenses (both
inbound and outbound)
Result
Industry reluctant to assume code.
If code is transferred, large overhead to conduct
due diligence
Spinoffs/incubated startups valued less by investors
after due diligence uncovers dubious code pedigree
Potential liability for university
Five 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 beginning
Tagging 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 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 IP
Open 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 industry
Illustration 
Comparison Of Some
Open Source Licenses
Company
Code
Company
Code
Company
Code
+
BSD Code
Combined
Work
Combined
+
+
MPL Code
Work
GPL Code
Combined
Work
Company not required
to grant any particular
license rights.
“Separate” non-MPL
files can be licensed
under other terms.
Company could be
required to apply MPL
terms to any files that
contain MPL code.
Risk that company
could be required to
license ENTIRE work
under the GPL.
Recap On Licensing Approach
Research-Only versus Commercial
Licensing model should be appropriate for the goals of the project
Research use
Copyleft licenses such as GPL may preclude use by industry
Licenses such as BSD pose fewer roadblocks to dissemination
to industry
Commercial use
Most 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.