Organized by Professor Randy H. Katz, Department of Electrical Engineering and Computer Science, University of California, Berkeley, randy@cs.Berkeley.edu
Local arrangements by Kimberly Peaks, Computing Research Association, kpeaks@cra.org
Issue
As Federal research funding becomes more constrained, increased industrial support for university research is one method commonly proposed to reduce the funding gap. There is widespread, although anecdotal, evidence that current university policies with respect to intellectual property rights and software licensing has significantly inhibited these critical industry-university collaborations. In addition, it has been observed that restrictive intellectual property rights rules of ownership complicate the free exchange of researchers between universities and industrial research laboratories.
Process and Desired Outcome
We holding a workshop on Monday, December 9, 1996 in Washington, DC during which representatives from University CS & E Departments, University Technology Licensing Offices, Industrial Research Laboratories, and Corporate Legal Staff will meet to collaboratively formulate underlying principles for University software licensing agreements.
Participants will share information about current licensing practices and collect information about the actual value to date of software license income at the nation's major research universities in computer science and engineering. This information will be made available to CRA participating institutions so as to form a foundation for a discipline-specific intellectual property rights policy at University technology licensing offices.
In addition, we will make recommendations on how to accomodate the special intellectual property rights needs of visiting researchers at educational institutions and industrial research laboratories.
Background
It is a widely held belief among faculty members and industry researchers that joint university-industry collaborations is desirable and should be strongly encouraged. Industrial support represents an important (and increasing) source of funding for university research. Universities provide a steady source of new ideas and energenic young researchers that industry can help focus on problems of mutual interest. And industry can provide a steady source of challenging problems for university investigations, or early access to emerging technologies for university research teams.
Financial pressures at the nation's universities have caused university administrators to look towards new methods to more aggressively leverage the financial and intellectual assets of the university. The result has been increased emphasis on university intellectual property, through associated patent and licensing policies, with the hope that this can yield substantial additional campus income. While fields like biotechnology may yield fundamental new techniques, with substantial licensing fees, this does not seem to be the case for software and many other engineering technologies. Agressive pursuit of licensing fees may actually inhibit university-industry interaction, and may yield substantially reduced industrial support for university research in the long term. Sponsoring companies often feel that they have a double idemnity: they must pay licensing fees in addition to the financial support they originally provided to a project.
On University campuses, there is inadequate discussion among faculty, administrators, and licensing office staffs. For example, university software is rarely "industrial strength" or well documented, and may require substantial additional effort to yield product-quality code. For the latter, client software is often given away while server software and services like documentation and technical support are sold. For the most part, university software has not obtained substantial licensing fees for its developers. On the other hand, we know of several instances where the university has benefited significantly from the good will of software companies that have based successful products on University-developed software.
Many believe that traditional licensing agreements are inappropriate for industry-sponsored university research. The primary value to industry of participation in the joint industry-university research programs is not the software or technology that is developed per se; it comes from the close technical interaction between the industrial sponsors and the University researchers. Most industry-university research collaborations are not intended as short-term, industry-funded "contract" development at the University, and industrial funding may represent only a (minority) component of the support for a project that encompasses state and federal sources of support as well.
Furthermore, the university has certain societal responsibilities. As an educational institution, it is the responsibility of the University to make the fruits of its research as widely available as possible, through publication of research results, but also the wide spread dissemination of its research "products." NCSA Mosaic is an example of how the fruits of government and industry supported research, made widely and easily available, can transform industrial practice, adding considerably to the reputation and reknown of the institution.
Workshop Process
Sunday, December 8
1800- 2100 No Host Reception
Monday, December 9
0800-0830 Continental Breakfast
0830-1000 WHERE ARE WE TODAY?
Review licensing data and model agreements collected from workshop participants.
What are good examples of successful agreements?
1000-1030 BREAK
1030-1200 WHERE DO WE WANT TO BE?
Brainstorm on desired outcomes. What do university university faculty and
industrial researchers want to achieve in terms of interaction? What are
the kinds of interaction, what intellectual property rights protection do
they need? What does the University administration want to achieve? What
forms of intellectual property should be protected? What are the roadblocks
to interaction given current policies and draft agreements?
1200-1300 WORKING LUNCH (continue brainstorming)
1300-1430 HOW DO WE GET THERE I?
Working groups break out to draft principles to underlie University licensing
agreements.
1430-1500 BREAK
1500-1630 HOW DO WE GET THERE II?
Groups come together to finish drafting principles for licensing agreements.
1630-1700 Wrap-up and discussion of next steps
Registration Fee $150 to offset the local arrangements costs.
The workshop hotel is the Embassy Row Hotel in Washington, DC. The address is 2015 Massachusetts Avenue, NW and the phone is 202-265-1600. Please arrange your hotel accommodations through CRA. Contact Kim Peaks at kpeaks@cra.org.
Applied Computing Systems Institute of Massachusetts, Inc. (ACSIOM)
Association of University Technology Managers
Colorado State Program for Collaborative Research Between Companies and University Researchers
Georgia Tech Copyrights and Patent Policy
Harvard University Principles and Policies that Govern Research and Other Professional Activities
Old Dominon University (Policy is being changed)
IEEE Guidelines for University Intellectual Property
University of Arizona Office of Technology Transfer
University of British Columbia Committee on Digital Scholarly Works
University of California Office of Technology Transfer
University of Massachusetts Draft Policies on Intellectual Property
University of Pennsylvania Faculty Handbook
University of Texas GNU Software Licensing Policy
More Information from UTexas on Software Intellectual Property Issues
University of Toronto Intellectual Property Rights Polices