University And Industry Collaborations

2. University And Industry Collaborations Ken Leppert Attorney Microsoft Legal and Corporate Affairs

3. 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-to-industry tech transfer of code • Propose some measures universities can take to increase likelihood of successful tech transfer of code

4. Modes Of Collaboration

5. Universities 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 Industry Mission 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 Contrasting Missions And Cultures MSR

7. Modes Of Collaboration • Gifts • RFPs • Fellowships, scholarships • Materials available on MSR website • Research platforms/RDKs • Sponsored research • Technical collaboration • Tech transfer

8. Easing Tech Transfer Of Software Code

9. Tech 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 funds • Bolster reputation of university and its faculty in the academic community. (E.g.: “Our code was picked up by XYZ Co.”)

10. Tech 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)

11. Tech 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 parties • Origin of code contributions – “Borrowing” of third-party 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

12. 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

13. 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 

14. Comparison Of Some Open Source Licenses Combined Work BSD Code Company not required to grant any particular license rights. Company Code + “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. Combined MPL Code Company Code + Work Combined Work Risk that company could be required to license ENTIRE work under the GPL. GPL Code Company Code +

15. 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

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