Shaping an Intellectual Property Policy for EECS

1. Shaping an Intellectual Property Policy for EECS David E. Culler EECS IAB IP Discussion

2. Outline • EECS IP Mantra • Current Problems • Background • Discussion EECS IAB IP Discussion

3. 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) EECS IAB IP Discussion

4. 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 EECS IAB IP Discussion

5. Background EECS IAB IP Discussion

6. 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 => IPRO too • Facilitate and collaborate with collection of centers EECS IAB IP Discussion

7. 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.” EECS IAB IP Discussion

8. 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. EECS IAB IP Discussion

9. 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 EECS IAB IP Discussion

10. 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.” EECS IAB IP Discussion

11. 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) EECS IAB IP Discussion

12. 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 EECS IAB IP Discussion

13. 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 EECS IAB IP Discussion

14. 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 EECS IAB IP Discussion

15. 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 EECS IAB IP Discussion

16. 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? EECS IAB IP Discussion