Shaping an Intellectual Property Policy
for EECS
David E. Culler
3/16/05
EECS IAB IP Discussion
Outline
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EECS IP Mantra
Current Problems
Background
Discussion
3/16/05
EECS IAB IP Discussion
EECS Open Mantra ---- IMPACT
• We’re 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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EECS IAB IP Discussion
So what’s the problem?
• Open Shoe doesn’t always fit
– More appropriate for “systems” than devices
– Confluence vs single major investment
– Don’t have a good boiler plate for non-open agreements
• Many variations on the theme in different centers
• Many companies don’t get it
– Why should I support the work, if everybody gets it?
=> 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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EECS IAB IP Discussion
Background
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EECS IAB IP Discussion
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”
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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 => IPRO too
– Facilitate and collaborate with collection of centers
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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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.
• VIF’s 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 VIF’s and one or more employees of a Member
Company who are not VIF’s, will be jointly owned by the
University of California and the Member Company.
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EECS IAB IP Discussion
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
– “what’s your is yours, ours is ours, joint is joint” agreement
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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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 => license to all on same terms
– No interest => exclusive permitted (CAB or non-CAB)
• Recognizes and defers indirect costs
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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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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EECS IAB IP Discussion
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?
3/16/05
EECS IAB IP Discussion