[DMCA-Activists] Open Collaboration: Tech Cos, Academics Ally to Correct Bayh-Dole Consequences

[Seth Johnson]

> http://www.developer.ibm.com/university/scholars/news/open_collaboration.html
> http://www.kauffman.org/pdf/open_collaboration_principles_12_05.pdf
> http://www.nytimes.com/2005/12/19/technology/19research.html

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> http://www.developer.ibm.com/university/scholars/news/open_collaboration.html


Twelve Leaders Adopt Principles to Accelerate Innovation

Higher education and the IT industry address open software
research


ARMONK, N.Y. and KANSAS CITY, MO., December 19, 2005 Leaders from
four information technology companies, seven American
universities and the Ewing Marion Kauffman Foundation announced
today that they have adopted first-of-a-kind guiding principles
to accelerate collaborative research for open source software.
These twelve enterprises believe the principles will accelerate
innovation and contribute to open source software research across
a breadth of initiatives, thus enabling the development of
related industry standards and greater interoperability, while
managing intellectual property in a more balanced manner.

In August, IBM and the Kauffman Foundation, a private foundation
that focuses on advancing innovation and entrepreneurship,
cosponsored a University and Industry Innovation Summit at the
Georgetown University Law Center in Washington, DC. To accelerate
collaborative innovation, current intellectual property barriers
were evaluated and plans were drafted to support a variety of
research relationships.

Recognizing the existence of a complex continuum of possible
research partnerships, the Summit team agreed to address open
collaboration models, in particular instances where researchers
will create and disseminate software knowledge freely to the
public. Pervasive acceptance of the open collaboration principles
by other universities and the IT industry, as well as the
development of guiding principles for other research agreements
remains at the core of the Summit team’s continuing agenda. The
goal is to shorten the time from the first spark, or idea, to the
commencement of research on that idea.

The Grand Challenge (Rationale): Greater commercialization
(bringing innovative collaboration to market quickly) throughout
the IT industry can depend on improved university and industry
intellectual property practices.

      This is nothing short of a call to action. A call to action
that universities, IBM, and other IT industry companies
understands and will address. In true collaborative form,
Universities and IT Industry Participants must come together to
acknowledge existing barriers, build solutions that address these
barriers, and work together to move more quickly from intention
(the research idea) to collaboration (including both open and
joint research collaborative models). Additionally, know that
this work will be complementing several organizations, for
example, many universities, IBM, HP, other IT industry companies,
and the Kauffman Foundation, that have been working on these
issues through GUIRR, BASIC, and through many other avenues. 

      Research partnerships between universities and industries
in the US are too complex due to intellectual property ownership
implications. With universities and industry competing on a
global scale, we must act now to enable a quicker approach to
research collaborations, allowing for continued national
innovation leadership. By proactively agreeing on standard
principles for all types of research relationships, we can
shorten the time it takes to move from concept through research
and development. 

Key Messages: We're raising awareness that this is a complex
challenge, with many possible solutions. It’s a classic business
problem, with no silver bullets. We’re working to break down the
complexity by building more point solutions across a continuum.

      Understanding the university-industry research continuum is
key. On the left is open collaboration, the middle is joint
proprietary and the right is sponsored private. We believe
solutions need to be identified to address each of these models
to help shorten the time from research intent to development.
Also, different industry business models exist and, at times,
universities and industry will need to employ different
intellectual property practices and research models. A one size
fits all approach has not been efficient. 

Our Objectives: By bridging the gaps, we'll accelerate innovative
collaboration between Universities and Industry.

      Promoting collaborative innovation between industry and
universities throughout computer science, its applications, IT
software, and the IT services disciplines. Removing barriers to
support collaborative research improvements. Shortening the time
from intent to joint development of IT knowledge and software,
when the goal is to openly share / publish created knowledge. 

Next Steps: Pervasive acceptance of the principles and continued
effort for 2006.

      Pervasive acceptance of the open collaboration principles,
i.e., providing an option to all US universities and all IT
companies (or other industries too). The Summit team will
continue address this problem by linking even more closely with
other work efforts such as the National Academy, e.g., GUIRR
(Government University Industry Research Roundtable) and to other
organizations that have really been pushing forward in this area,
like BASIC (Bay Area Science and Innovation Consortium), COGR
(Council on Government Relations), the Council on
Competitiveness, CRA (Computer Research Assoc.), and so on. And
we plan to keep the Summit team together, to work on the other
types of research arrangements, along the university - industry
research continuum. This is a macro problem and research
principles represent micro solutions directed at each point along
the continuum. 

For more information, view the press release
(http://www.developer.ibm.com/university/scholars/downloads/Open_Collaboration_joint_press_release.pdf)
and Open Collaboration Principles document
(http://www.developer.ibm.com/university/scholars/downloads/OpenCollaborationPrinciples_December2005.pdf).

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> http://www.kauffman.org/pdf/open_collaboration_principles_12_05.pdf


Open Collaboration Principles

Free & Open Collaboration Principles - Purpose

This "Free Public Commons" model represents just one type of
formal collaboration that can be used when appropriate and will
co-exist with other models, such as sponsored research, consortia
and other types of university/industry collaborations, where the
results are intended to be proprietary or publicly disseminated.
This free & open collaboration principles document is the major
underpinning of a policy for handling intellectual property
rights arising from software related collaborations between
industry and universities under circumstances where the
participants intend for the results to be made part of a royalty
free public commons (a body of knowledge that can be freely used
by the public). The nature of the public commons collaboration,
including its purpose, scope and rules of operation is generally
decided by the founding participants. Some collaboration projects
may involve a small group of participants, perhaps even one
company and one university. Other collaboration projects may
involve larger groups or may be part of ongoing managed projects
(e.g. Linux or standards bodies).

Free & Open Collaboration Principles

A Free Public Commons collaboration between industry and academic
institutions should have the following attributes:

I. Fee Free, Community Prepared, Publicly Shared

The intellectual property created in the collaboration must be
made available for commercial and academic use by every member of
the public free of charge for use in open source software,
software related industry standards, software interoperability
and other publicly available programs as may be agreed to by the
collaborating parties (Free & Open Collaboration Projects)1.

If a participant2 in a Free & Open Collaboration Project owns or
controls pre-existing patents or patent applications necessary to
implement the contribution to the software related standard or
the contributed open-source software in the Free Public Commons,
to the extent it has the power3, it will make the patents or
patent applications available to the public without charge for
implementing such standard or software4. With respect to
open-source software and open standards bodies having rules that
permit5, this obligation can be satisfied by the participant
distributing the software under an appropriate OSI compliant
open-source license. To the extent it has the power, the
participant will also make background copyrights in any of its
contributions to the commons available to the public without
charge for use in the commons. To the extent that a participant
knows that it can not make background copyrights and necessary
patents or patent applications available to the public without
charge, it will timely inform the other participants6.

II. Rules to Protect Both the Public and the Participant7

A member of the public’s rights to use the intellectual property
may be terminated if they use their own intellectual property or
assist other parties to attack the implementation of the Public
Commons or the Open Collaboration Project itself 8.

Participants in the collaboration need not relinquish ownership
of their intellectual property rights, nor will they be
restricted from transferring ownership as long as the public’s
rights are preserved in the transfer9.

Footnotes (Parties, Participants)

1. The scope of the public commons is up to the participants,
although it is contemplated that most often the commons be
specifically directed to open source, industry standards and
interoperability projects.

   a. The commitment to make the intellectual property available
may be accomplished in many ways such as by a publication, a
mutual non-assert pledge with the public as a third party
beneficiary, dedication of patents to the public, not filing
patents, a license grant or by transfer to a third party such as
an open trust.

   b. "Free of charge" means no royalties, upfront payments or
required reimbursements of any kind.

   c. "Every member of the public" means that no one can be
denied these rights (except as may be required by law) including
competitors.

   d. "open source" means software distributed under an OSI
compliant license as described at
http://www.opensource.org/docs/definition.php

2. Participant means both the persons actively involved in the
project and the institution that employs or contracts those
persons or otherwise assigns the persons to the project (e.g. an
institution that assigns its students). (a) With respect to open
source, no institutional participant is obligated to contribute
code authored by a person outside the actual project team,
however, ensuring that such code is not contributed or made part
of the project is ultimately the responsibility of the
institution who owns the code or employs the persons who propose
to put the code into the project. (b) It is recognized that an
institutional participant may not be able to commit rights to
background intellectual property owned or controlled by an
individual project member and that any such rights may need to
handled under a separate agreement with the individual.

3. In cases where a project is government funded there may be
circumstances where the government may elect to take ownership of
an invention if the participant does not file for patent
protection. A participant is not deemed to "have the power"
simply because they could have elected to file for patent
protection but did not. Under such circumstances, a participant
may not be able to grant rights in patents to which the
government elects to take title. It is also recognized that it
may be necessary for a participant to obtain the concurrence of a
nonparticipating creator of intellectual property prior to making
that intellectual property available to the public.

4. When collaboration is intended to generate input to an open
standard or an open source project, background (preexisting)
patent rights are required as to "necessary claims". This is
required for many open standards bodies and most Open Source
Initiative (OSI) approved open source licenses. This principle is
intended to ensure that where the intent of the collaboration is
open source or open standards, the results can be used consistent
with open source/open standards objectives. Background copyright
licenses must be granted for all copyrightable materials actually
contributed by the participant either directly or by agreement.
For example, a participant may agree that program code that is a
derivative of a pre-existing program will be provided to the
commons, even though other participants are helping to write the
code.

5. Rules that permit may include the right to provide a public
reference implementation instead of a broader license.

6. Knowledge means personal knowledge of those directly involved
with the execution of the agreement and persons actively
participating in the project. This does not contemplate any duty
to search for exceptions.

7. Additional rules may be established by the participants but
should be limited in scope and number. Consideration should be
given to the impact of additional rules on the number of parties
willing to participate.

   a. The right to use the intellectual property commercially is
key to incenting the participation of commercial entities in
these projects. Without a commercial use right, the number of
commercial entities who would be willing to contribute to the
commons may be greatly curtailed.

   b. A required indemnification will limit the number of
participants. No participant should have to indemnify another or
a member of the public for use of the contribution – the
collaborators are innovators and not insurers. Contributions are
"AS IS". To the extent permitted by law, a collaborator may
require barring of damages against the collaborator from users of
its contribution

8. This rule is intended to protect the commons itself. A member
of the public should not be able to take advantage of
intellectual property placed in the commons while at the same
time using their own intellectual property to attack others for
using the materials in the commons. Under this principle a person
or institution getting a free license to practice a standard
developed under the collaboration would lose that license if they
asserted patents against someone for practicing the standard.
Note that the rights of a contributor to the commons cannot be
terminated under this rule.

9. The fact that the public will have rights to use the
intellectual property resulting from the collaboration for
certain purposes does not mean that the participant has to give
up ownership and the rights associated with it (e.g. the right to
sell the intellectual property or the right to license the
intellectual property for royalties for use outside the scope of
the rights granted to the public). As long as the public’s rights
continue, the participant is free to do with it what they choose.
In cases where a project is government funded it is recognized
that a participant is not obligated to take title and may not be
able to grant ongoing rights to patents to which the government
elects to take title.

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> http://www.nytimes.com/2005/12/19/technology/19research.html


Guidelines Set on Software Property Rights


By STEVE LOHR

Published: December 19, 2005


To remove obstacles to joint research, four leading technology
companies and seven American universities have agreed on
principles for making software developed in collaborative
projects freely available.


The legal wrangling over intellectual property rights in research
projects involving universities and companies, specialists say,
can take months, sometimes more than a year. This legal
maneuvering, they say, is not only slowing the pace of
innovation, but is also prompting some companies to seek
university research partners in other countries, where
negotiations over intellectual property are less time-consuming.

"This a great start to addressing the problem," said Peter A.
Freeman, assistant director for computer and information science
and engineering at the National Science Foundation. "It's a
recognition by both sides that for precompetitive research, 'It's
the science, stupid.' It's not the intellectual property."

The companies involved in the agreement, which will be announced
today, are I.B.M., Hewlett-Packard, Intel and Cisco. The
educational partners are the Rensselaer Polytechnic Institute,
the Georgia Institute of Technology and the universities of
Stanford, California at Berkeley, Carnegie Mellon, Illinois and
Texas.

Concern about the issue of intellectual property restraints on
collaborative research has been growing among academic and
private-sector scientists. The new effort is a byproduct of a
gathering of university and industry researchers in Washington
last August, sponsored by I.B.M. and the Ewing Marion Kauffman
Foundation in Kansas City, Mo., which studies and finances
innovation and entrepreneurial activity.

The current problem, said Lesa Mitchell, a vice president at the
Kauffman Foundation, was partly an "unintended consequence" of
policies meant to encourage universities to make their research
available for commercial uses, thus stimulating innovation and
economic growth.

The tone was set, Ms. Mitchell said, by the Bayh-Dole Act of
1980, which allowed universities to hold the patents on federally
funded research and to license that intellectual property to
industry.

Since then, universities, like many corporations, have sought to
cash in wherever possible on their intellectual property. The
companies and universities have agreed to make intellectual
property developed in open collaborations available free for
commercial and academic use.

They have also agreed to a set of guidelines addressing the
rights of the participating companies and universities, and the
public.

The guidelines and framework for the agreement will posted this
week at www.ibm.com/university, and at the Kauffman foundation's
site, www.kauffman.org.

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