

How do I startup if I don't own the code? - tricky

I was recently approached about commercializing some software I created while working at an academic research lab.  I was paid with research grants so I'd assume the school owns the code.<p>I'd love to turn this into a startup... What's the best way to do it considering I don't know who owns the source?
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pg
If you can rewrite it from scratch, that may be the safest plan. You'll
probably need to anyway. You can also go talk to the university about it, but
many (perhaps most) universities are cluelessly overreaching about this sort
of thing, and take forever as well.

~~~
tricky
I'm afraid of the overreaching part... I'd love to rewrite, but i'm having
trouble justifying a rewrite of something that works really well as-is.
Translating it to another language doesn't seem like enough.

~~~
wheels
Just translating would probably leave it as a "derivative work". However, note
that licenses like the BSD and MIT licenses came specifically from
universities releasing their code under very permissive terms. Perhaps your
university can be convinced to do the same.

~~~
pg
How many universities have ever given a startup trouble for making software
that was a "derivative work," though? Not one that I know of. In practice it's
enough to rewrite under conditions where no one has claim to your IP.

~~~
chengmi
It doesn't make sense to sue a startup--it's just not profitable. However,
there are instances where universities have appeared to wait for the company
or technology to mature before taking legal action. Two examples of this:

University of Wisconsin sues Intel for Core 2 Duo patent infringement:
[http://www.engadget.com/2008/02/07/intel-sued-for-
core-2-duo...](http://www.engadget.com/2008/02/07/intel-sued-for-core-2-duo-
patent-infringement-by-the-universi/)

Northeastern University sues Google over Database Architecture:
[http://www.techcrunch.com/2007/11/10/google-being-sued-
over-...](http://www.techcrunch.com/2007/11/10/google-being-sued-over-
database-architecture/)

This goes to show that universities aren't always benevolent when it comes to
IP. Even if the software is rewritten, there's no guarantee that university
lawyers won't accuse you of infringement down the line.

Isn't licensing specifically designed to address this issue of IP? What would
be a reason not to license the software from the university?

~~~
pg
Neither of these were universities suing their own students.

 _What would be a reason not to license the software from the university?_

(a) That the university might have insanely unrealistic ideas about terms,
because they're so inexperienced, and (b) that it could take so long to
arrange the deal that it would literally be faster to rewrite it.

~~~
chengmi
_Neither of these were universities suing their own students._

That's an interesting point, but 1) would the university not have sued if it
were a student (or professor) that provided the IP? and 2) then why shouldn't
he just use the code outright, especially since he claims to have written it
and the university is not likely to care?

 _(a) That the university might have insanely unrealistic ideas about terms,
because they're so inexperienced, and (b) that it could take so long to
arrange the deal that it would literally be faster to rewrite it._

Licensing is there for a purpose--someone paid for him to develop this
software, so he has an obligation to that employer to at least ask permission
before using the software.

Imagine if a startup took seed money from you to develop their software, then
turned around to rewrite it for use in another project and thereby
sidestepping your 2-10% share. Wouldn't that be unethical? They could even
claim both (a) and (b) above.

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ivankirigin
Some schools are really good about this. CMU for example is extremely
flexible, even with patents.

But I'd also recommend looking at the terms of the contract that gave you
funding.

Government funded projects usually include government purpose rights. It
depends on the contract how bad the rights are for a company.

In most cases, government funding means that in a pinch, they can take all
your tech and give it to another company to mass produce. The reason would
probably be some wartime situation where you needed to produce a million X to
fight. I think this happened to B52s in WWII.

Other recommendations about tech transfer are spot on.

You should also take this as an opportunity to network with potential
investors. Go to your school's entrepreneurship center (if they have one), and
talk to people there about your plans.

I know for CMU, you can meet lots of Angels that way. Lots of the associated
companies have probably gone through the same process.

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pius
_I was paid with research grants so I'd assume the school owns the code._

I don't know what school you went to, but many (most?) large
engineering/research institutions have a technology licensing office (e.g.
<http://web.mit.edu/tlo/www/>) that can check that assumption definitively for
you.

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lutorm
I checked this out since I wanted to release code I wrote for my research
under the GPL: Where I work (UCSC), the employee owns the copyright to code he
writes, unless the code was part of a deliverable for some grant (in which
case it generally belongs to the grant-awarding institution). For general
research grants, that's not the case. If there are potential patents, the
university does claim right to those, but if there aren't, there was no
problem.

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ken
When I worked for a university, I asked my boss if I could open-source my
code, which was largely funded by NSF. I showed him a license, and summarized
it for him. His response surprised me:

"By all means -- anything 'open' is music to NSF's ears, because it means they
don't have to pay for several labs to do the same work. I'll mention that in
our annual report."

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aneesh
Talk to the University's tech transfer office.

~~~
paulsb
But don't tell them that someone is interested in your technology. If I were
you, I would find out about the status of the IP (who owns, how old it is,
etc.) and try to find out if the university is interested in it or not. If
they are not interested in it, ask them to sign over the IP to you outright.
After you personally own the IP, you can do whatever you want with it, and it
will be the universities tough luck that they weren't able to capitalise on
the IP when they had it - they've had their chance.

I know of three university spin-out companies that have had IP they developed
assigned over to them because the university wasn't interested, upon which
successful companies have been formed.

Also, I don't know about tech transfer offices in the states, but in the UK,
they are completely incompetent. I wouldn't waste my time or effort in trying
to negotiate a licensing deal. You probably could have re-written it by then!

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SwellJoe
It depends on the school policies. You'll need to just find out what they are.
We can't tell you that.

Some schools are quite friendly to business arrangements, while others are
grabby. There are plenty of products on the market that were developed at
universities and later commercialized.

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car
Talk to your universities office of technology licensing, and ask them to give
you an exclusive license to your software. That's what Google did with
Stanford.

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opportunity
How long would it take you to redo what you did at the research lab?

~~~
tricky
not too long, but the concepts would be exactly the same... wouldn't it then
become, "who owns the idea?"

~~~
pius
There is no such legal concept, at least not in the United States. One can own
an implementation of an idea, but not an idea. If you can implement the
concepts in a novel way, you're fine.

~~~
notauser
(In agreement, just to express it another way): Patents on implementations can
and do effectively limit idea reuse.

E.g. if the idea is "a web 2.0 flower box" making a second implementation is
fine.

If the idea is a "web 2.0 flower box using this specific patented method of
procedural generation" then you won't be able to recreate the same product
again - at least not without moving to Europe where there are no software
patents :)

------
samwise
have someone else write the code then buy it from them.

