Cases of institutional difficulties for developing free and open source technologies

Dear GOSHers,

We know that in general there is no institutional support for the development of free and open source technologies since, typically, the criteria for assessing academic performance are based on intellectual property. I have heard informal reports of this difficulty reaching other levels and I am seeking examples of institutions that hinder the development of free and open source projects more directly, either by official or informal policies that create obstacles for an employee or researcher to license their projects under the terms of free and open source licenses. I wonder if anyone knows of a case like this?

This will serve as example of the challenges we face for OScH on our roadmap, illustrating the extreme that can be reached.

Thank you,
Rafael

1 Like

I got a reply from Carlos Serrano, who works at the Lawrence Berkeley National Lab in the US, explaining his experience regarding Free and Open Source technology development. I copy bellow his comments, which Carlos kindly agreed to share.

At US National Labs, and LBNL in particular, the mandate of Technology Departments has traditionally been fundamentally different from institutions like CERN. The philosophy at US Labs was that if an invention is created using US taxpayers’ dollars and that invention can be transferred to industry for them to make a profit, then US Labs should get a return on the investment through royalties or other means. The mandates have been revised lately to be much more vague on those aspects. The current situation is that (at least at LBNL) if we want to publish an invention under some sort of Open Source license, we need to first justify that that invention doesn’t have the potential to generate some revenue to the Lab. This hasn’t been a problem for us thus far and we have published both software and HDL in this fashion (treating HDL as software and using a BSD license). Some comments:

  • We haven’t yet tried to publish hardware files (schematics, gerbers, BOMs, etc.) but we intend to try at some point,
  • We haven’t gotten any opposition to release code (software and HDL) to the public. That was after discussions with our Tech Transfer showing them that the developments in each case were not considered to have much of a real commercial value, which we truly believed,
  • There are restrictions on what licenses US Department of Energy Labs can use to publish their software/HDL under. There is a list of DOE-accepted licenses and if you intend to publish under any of those, then each lab’s tech transfer department has the authority to decide to do so. If the license you would like to use is not part of that list then DOE needs to review the license and decide whether it’s generally acceptable for use in our Labs. One problem we’ve encountered with this issue is that we are not allowed to publish under GPL (of any version), because of a clause on releasing patents which is considered dangerous by DOE lawyers. The argument is that it is not explicit enough in that the license only affects to that piece of software in particular and does not grant rights over all patents owned by our organization (the University of California, Berkeley in our case). Whether one shares this view or not does not really matter, those are the rules,
  • We’ve published code before as I mentioned, and we’ll continue to do so, but it’s not a huge priority for us because: 1) it requires a substantial amount of effort navigating through the bureaucracy, 2) all of our designs are owned by definition by the US DOE, which means we can automatically share our developments with any other DOE Lab, which is basically 99% of our collaborators, and 3) we are required to keep track on the impact of the material we release and count downloads, etc. and thus far the impact on the code we have released has basically been very close to 0. This doesn’t mean we’ll stop publishing what we do, but you can get a sense that it’s not very high on our priority list.
1 Like

This is a positive rather than a negative example, but for contrast Cambridge and Stanford have permissive policies:

###University of Cambridge

The [2005 Ordinance on Intellectual Property Rights] (https://www.admin.cam.ac.uk/univ/so/2011/chapter13-section2.html) gives all researchers the ‘Freedom to make research public

  1. University staff are entitled to decide that the results of any research undertaken by them in the course of their employment by the University shall be published or disseminated to other persons to use or disclose as they wish in accordance with normal academic practice.

However, if University staff decide that the results of their research should be commercialized, they should be aware that, in respect of patents and similar rights in inventions and new technology, protection for and subsequent commercialization of such inventions may be jeopardized if information about the inventions is made available to the public anywhere in the world before all relevant applications for protection have been lodged.

If any IP rights exist without need for formal application, for example copyright, then such rights belong to the creator, with the exception of works created for University administrative and managerial purposes. (even then, the Head of Department can authorise release ‘under Open Source rules or similar arrangements’)

###Stanford University

The Patent Policy allows:

The inventors, acting collectively where there is more than one, are free to place their inventions in the public domain if they believe that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any agreements that supported or related to the work.

They have a seperate but equally permissive policy covering Tangible Research Property (TRP), which they state can include biological materials, engineering drawings, computer software, integrated circuit chips, computer databases, prototype devices, circuit diagrams, equipment, and associated research data.

A. Freedom of Access

The University’s Openness in Research Guidelines, adopted by the Senate in 1969, state:

“…that the principle of openness in research - the principle of freedom of access by all interested persons to the underlying data, to the processes, and to the final results of research - is one of overriding importance.”

Consistent with these Guidelines, it is Stanford’s policy to promote the prompt and open exchange of TRP and associated research data with scientific colleagues outside the investigator’s immediate laboratory.

So, if you need some examples of policies to put in front of people as positive examples, try these!

Jenny

1 Like

Thanks @rpez and @jcm80 for the examples, I read them with great interest. Sadly I think most academic institutions are fairly regressive and restrictive when it comes to technology.

For example, I’d like to point out some misconceptions that these examples have shown:

subsequent commercialization of such inventions may be jeopardized if information about the inventions is made available to the public

This statement is problematic because it perpetuates the misconception that “making public” is incompatible with “making profit” (or “commercialisation”). In fact, the very act of getting a patent involves making your invention and how it works fully public.

The inventors, acting collectively where there is more than one, are free to place their inventions in the public domain

This misuses the term “public domain”. Under current copyright laws in most jurisdictions, literally every thing you create is automatically copyrighted. The public domain is defined as works not covered by copyright. But under most jurisdictions, there is literally no legal means for you to relinquish copyright over a work until the copyright expires, which is easily 100+ years after creation. When dealing with technological inventions where patents play a dominant role, then this might be easier.

Even then, these institution policies perpetuate a fundamental misunderstanding that “open source” is purely a charitable and non-profit activity and is the opposite of “commercialisation”. This is simply not true!

In fact, “open source” (or more accurately free (as in freedom) software and hardware) licenses will not work without copyright.

Thanks @hpy I agree there is a conflation with commercialisation and patenting. The Cambridge policy is trying to remind researchers that you can’t patent an idea that is already public, but with some loose terminology.

The Stanford policy talking about the public domain is specifically a patent policy, they have a separate policy for copyrightable material.

Jenny

1 Like

Hi, @rpez, @hpy and @jcm80
Thanks for the info, this is a very important topic.

I totally agree. It is surprising how little is known (and taught) about open source. (by the way, thank you @amchagas, @jarancio, @art.pilacinski and @hpy for putting together the teaching materials about OS; we need to teach/learn/debate more about OS with students). Here, students and academics are faced with two alernatives to make technology (and a living out of it) either via grant-funded research or patent-based commercialisation. Open source and pubic domain is perceived almost as an heroic activist act. My experience here is that every node in the food chain seems to like OS, from students to Deans, except for tech transfer officers and “innovation” bubble propagators.

The university rules seem to be clear about how to protect techs and share benefits between the developer and the university when the developer wants to commercialise. What it is less clear to me is what happens when you want to put technology (with potential commercialisation) in the public domain. In my univ there is a “Communication Duty” of any creation, discovery or invention to be informed to the univ immediately. Given the frenesi for innovation and patents, the univ is very active scanning/engaging projects for patent applications.

In some cases in other univ, I know of researchers that try to convince their tech transfer office that the tools being published are worthless, at least commercially speaking. Other people simply publish/talk about their work just to block any intentions of patenting by the univ., claiming they didn´t know or that was an “accident” (I have heard this from people in the UK and also in Chile). Under these rules, the challenge, therefore, is how to promote your recent piece of OS work and attract students without getting the attention of tech transfer officers that might want to protect your work as soon as they see it. This a very hard and time-comsuming task; getting asymptotically close to “I made something useful” but not “too” useful.

I have also heard that some univ follow the Stanford model where you are free to put things in the public domain “unless that thing can be potentially commercialised”. Again, because of this idea that leaving valuable things in the public domain is a loss (?).

I also knew a very bad case where an univ “encouraged” someone to patent something very useful that was aimed to be in the public domain by saying “you do it or we will do it anyway”. But this person is afraid to talk openly about this since it can stop the project.

BTW, Any expert on the Bayh-Dole Act? origins, people behind today, etc.

2 Likes

I wanted to add this exact phrase this person told me.

Is this possible at all? Can univ patent something without the developer?

1 Like

I think there might be some miscommunication here… As far as I understand, as soon as something is made public in anyway (blog post, publication in peer reviewed journal, you tube video and what not), this “thing” cannot be patented anymore. I think this is what is meant with:

subsequent commercialization of such inventions may be jeopardized if information about the inventions is made available to the public

Because people still have the idea that for a business to be viable and profitable, it needs to “defend itself” from copies, and leverage on scarcity. Both provided, in theory, by the patent system (how well it is provided is a different discussion).

“you do it or we will do it anyway”

It is funny because I had a chat this week with a patent attorney here in Germany and he was again explaining that if the patent office finds any public record of your idea, they won’t grant a patent.

So, if you release this idea “unintentionally” on social media/blog/preprint, it is already very hard (if not impossible) for someone to patent it on your behalf. (you might get away with it inside an university once, or twice :stuck_out_tongue: - sometimes is better to ask for forgiveness rather than permission.

And the thing about someone doing a patent for you, I guess it depends quite a bit on the working contract you signed with the university. Here in Tuebingen, they have a lot of rights over the things we create in the labs, although it is all in the fine prints of a very document you sign when you first enter the university system (normally when you are ~20 or so?)

1 Like

Hi @amchagas,

I meant that I agree with @hpy comment. Most people in my univ think that the only way to make profit is through protection; and that´s what they “teach” students. This is why your effort of putting together lectures on OS is very useful (thanks for that BTW!)

In this case, this person had to file a patent before releasing any info about it, I understood that.

Yes, this is what a lot of people do. But playing this game for ever is almost impossible.
Someone showed me this initiative https://publicdomainchronicle.org
It looks interesting.

1 Like

Most people in my univ think that the only way to make profit is through protection; and that´s what they “teach” students. This is why your effort of putting together lectures on OS is very useful (thanks for that BTW!)

Thanks! BTW, instead of saying “protection”, I suggest the word “restrict” instead when it comes to patents (and copyright). Because if you say “protection”, it suggests that without patents (or copyright) your work will be harmed and “not protected” which is untrue! In fact patents can be harmful, too, to both the creator and everyone else.

Is this possible at all? Can univ patent something without the developer?

I have been in universities where if you are hired by them, such as by being staff or a professor, your contract stipulates that everything you create you agree that the university “owns” them and not you. The university then uses this to patent stuff (or enforce restrictive copyright if copyright applies) “on behalf” of the creator… Very unhealthy IMHO.

release this idea “unintentionally” on social media/blog/preprint

This is also the solution that I see most often. In fact I read a blog post once about an academic who made it a rule that they always reveal something they create in a publication (like a journal or magazine) as soon as possible before their institution swoops in a restricts it with patents.

Someone showed me this initiative https://publicdomainchronicle.org

Looks very cool, I like this idea! Is it well promoted?

The situation of patenting somebody else works is more complicated that that. First, patent examiners cannot read the entire internet looking for prior art, in all languages. Also, there are several ways that patent eager applicants can circumvent prior art, with minor modifications of previous works that end up protecting your idea without patent examiners noticing. Also, remember that there are Patent Trolls. It is a minefield.

Having said that, I had a conversation with a Brazilian patent examiner some years ago. He recognized that the current patent system is not sustainable and suggested that we should promote free/libre technologies as an alternative. The best advice he gave was to intentionally generate prior art by publishing patent-like descriptions of inventions - i.e. in technical language. Both in Portuguese and English to increase the chances that patent examiners find and understand the invention. In case they do not find existing prior art it, and the patent ends up issued, it will be very difficult and expensive to litigate and cancel the patent (based on an Youtube video or blog post, for instance). The technique is called defensive publication.

There is also the DPL (Defensive patent License), but in this case you have to go though all the burden and cost of making the patent (which is exactly what Sparkfun’s Nathan Seidle says it is a waste of time) for finally licencing it publicly. It is the safest within today’s legislation, but I wonder if a research institution will ever use it.

1 Like

which is exactly what Sparkfun’s Nathan Seidle says it is a waste of time

Thanks for bringing up this great talk! I’ll add this to the licensing lecture discussion in the other thread.