Training II: Software, Publications, IP, and Export Control Issues Many researchers tend not to regard software as IP. They often share software with people.

Training II: Software, Publications, IP, and Export Control Issues

Many researchers tend not to regard software as IP. They often share software with people outside the Laboratory without regard to issues like Export Control, commercial value of the software, Government ownership of the IP, etc. TT Offices may not be aware of the practice or may be ignoring it. What should the Laboratories be doing to make sure that their researchers are complying with Export Control and Invention reporting requirements?

Software Defined• DFARS 252.227-7014:

– “Computer software” means computer programs, source code, source code listings, object code listings, design details, algorithms, processes, flow charts, formulae, and related material that would enable the software to be reproduced, recreated, or recompiled. Computer software does not include computer databases or computer software documentation.

• FAR 27.401: – “Data” means recorded information, regardless of form or the media on which

it may be recorded. The term includes technical data and computer software. The term does not include information incidental to contract administration, such as financial, administrative, cost or pricing, or management information.

Software as Property (Excluding the access of Others)

• Copyright law – Software is protected when set down in a tangible, fixed form. The expression

of the idea is protected, not the idea itself. – Some protection on a literal level, but 3rd parties may design around the idea by

expressing it differently (i.e. rewriting underlying code to achieve same results). – Does not protect works solely authored by the US Government.

• Patent law– Patents are granted based largely on whether the software relates to a

“Machine-or-transformation.” However, this is only a useful and important clue, not the sole or exclusive test. See Bilski v. Kappos (2010).

– Patentee has exclusory rights to the underlying processes & inventive features. – Offers a more robust mechanism to protect the actual invention expressed in

the source code and the object code.

Software as Property (Excluding the access of Others)

• Trade Secrets Law– Protects secret valuable business information from misappropriation by others,

as long as the information is valuable and maintained as a secret. – Misappropriation occurs when information has been obtained through the

abuse of a confidential relationship. – May be used to protect subject matter that is unpatentable.

• Contracts– FAR Subpart 27.4 – Rights in Data and Copyrights– DFARS Subpart 227.72 – Rights In Computer Software and Computer Software

Documentation– 15 USC 3710a – Cooperative Research and Development Agreements– 35 USC 209 – Licensing federally owned inventions

Issues with Sharing SoftwareWhy shouldn’t Government Employees freely share software?

• Authored by Government:– Acquisition strategy;– Control of configuration, maintenance, and quality;– Preventing product dilution, such as lesser quality (and expensive) “knock-offs”

• Authored by Industry/Academia:– The Gov’t may have right to use the software, but not the right to disseminate;– Prevent Infringement/Misappropriation/Contract breaches by Gov’t;– Laws mandating that all Gov’t Employees maintain complete confidentiality

• In Any case:– Export Control, Classification, OPSEC; – Agency Policies, Regulations and Directives (including procedures of dissemination

and marking instructions)

Developed under Contract• FAR 27.404:

– “Limited rights data” means data, other than computer software, that embody trade secrets or are commercial or financial and confidential or privileged, to the extent that such data pertain to items, components, or processes developed at private expense, including minor modifications.

• DFARS 252.227-7014: – Contractors grant the Government license rights in noncommercial computer

software or computer software documentation. – All rights not granted to the Government are retained by the Contractor.– Licenses depend on funding and explicit deliverables

• Unlimited Rights• Government Purpose Rights• Restricted Rights

Federal Employee Duty• 18 USC §1905: Trade Secrets Act, Prohibition on Disclosure of Confidential Info

– Confidentiality of Information in General; – Gov’t employees personally liable for making known any confidential trade

secret, processes, operations or apparatus obtained in course of employment;– Punishments include fines and/or up to 1 year imprisonment

• 41 USC §423: Contractor Bid, Proposal, or Source Selection Confidentiality– Prohibits any disclosure of procurement information, including proprietary

information about manufacturing processes, operations, or techniques marked by the contractor as "proprietary" or as contractor "bid or proposal information“

– Punishments include fines, up to 5 years imprisonment, and/or a civil penalty of no more than $50,000 for each violation;

Federal Employee Duty• 10 USC §2320(a)(2)(B): Rights in Technical Data

– Prohibition on Disclosure of Contractor Proprietary Information – Provides a contractor with the right to restrict the Gov’t from releasing or

disclosing any technical information pertaining to an item or process developed solely at the contractor's private expense; and

• 18 USC § 1831: Economic Espionage Act– Prohibition on Unauthorized Taking of a Trade Secret– Any organization that steals, or without authorization appropriates, takes or

otherwise illicitly obtains a trade secret is subject to a fine of not more than $10 million.

Export Control• Arms Export Control Act (22 USC Chapter 39)

– Cornerstone of U.S. munitions export control law. – Implemented by US State Department through International Traffic in Arms

Regulations (ITAR).

• ITAR (22 CFR Parts 120-130)– Information and material pertaining to defense and military related

technologies may only be shared with US Persons unless authorized by the State Department or a special exemption is used.

– Heavy fines for providing non-US persons with access to ITAR-protected defense articles, services or technical unless authorized or exempted.

– The “Munitions List” (22 CFR Part 121) identifies, in varying detail, the information, materials, and items subject to export control.

Export Control• Defense Articles and the Munitions List

– State Department designates “defense articles and defense services” subject to export control and includes any item or technical data listed at 22 CFR §121.1.

– “Defense Articles” also include recorded technical data that reveals technical data directly relating to items appearing on the Munitions List. §120.6.

– Technical data includes Software directly related to defense articles. §120.10 (a)(4).

– “Software includes but is not limited to the system functional design, logic flow, algorithms, application programs, operating systems and support software for design, implementation, test, operation, diagnosis and repair.” §121.8 (f)

– “The articles in this category include any end item, components, accessory, attachment, part, firmware, software or system that has been designed or manufactured using technical data and defense services controlled by this category.” Excerpt repeated in several categories of §121.1.

ITAR Categories

1. Firearms, Close Assault Weapons and Combat Shotguns

2. Guns and Armament3. Ammunition/Ordnance4. Launch Vehicles, Guided Missiles, Ballistic

Missiles, Rockets, Torpedoes, Bombs, and Mines

5. Explosives and Energetic Materials, Propellants, Incendiary Agents, and their Constituents

6. Vessels of War and Special Naval Equipment7. Tanks and Military Vehicles8. Aircraft and Associated Equipment9. Military Training Equipment10. Personal protective equipment11. Military Electronics

12. Fire Control, Range Finder, Optical and Guidance and Control Equipment

13. Auxiliary Military Equipment14. Toxicological Agents, Including Chemical

Agents, Biological Agents, and Associated Equipment

15. Spacecraft Systems and Associated Equipment16. Nuclear Weapons, Design and Testing Related

Items17. Classified Articles, Technical Data and Defense

Services Not Otherwise Enumerated18. Directed Energy Weapons19. [Reserved]20. Submersible Vessels, Oceanographic and

Associated Equipment21. Miscellaneous Articles

“The following articles, services, and related technical data are designated as defense articles and defense services…”

Export Control• Export Administration Act (50 USC §2401 et seq.)

– Regulates the export or re-export of U.S.-origin dual-use goods, software, and technology for reasons of national security, foreign policy, and/or short supply

• Export Administration Regulations (EAR) (15 CFR Parts 730-774), – Implements Export Administration Act by US Commerce Department w/

consultation of Departments of Defense, Energy, & State.

• Commerce Control List (CCL) (15 CFR Part 774, Supp. 1) – Detailed specifications for about 2400 dual-use items including equipment,

materials, software, and technology (including data and knowhow) likely requiring some type of export license.

– Organized in 10 broad categories.– In many cases, items on the CCL will only require a license if going to a

particular country.

• Government must obtain a license or exemption before an employee may share ITAR controlled software with foreign companies.

• US Companies, particularly software companies, are often averse to receiving any software that is ITAR controlled.

Export Control

Licensing of Government Inventions

• Agencies may license inventions w/o filing patent application (software and biological inventions – monochlonal antibodies and cell lines) but need a license application

• USG’s undivided interest in joint invention now clearly licensable

• Notice to Attorney General (Antitrust Division) of proposed exclusive license not required

• Publication in Federal Register of notice of invention availability for licensing not required - agency has discretion on how to let the public know about its inventions

• CRADA inventions, transfers in joint inventions under 35 USC 202(e), and acquired rights in “bundled” inventions under 35 USC 207(a)(3) are expressly excluded from reg and its requirements

Licensing of Government Inventions

• Waiver procedures of domestic manufacturing requirement provided

• At least a 15-day Federal Register notice of intent to grant an exclusive license is permitted

• Non-exclusive licensee may be given right to sue infringers • Research license needs only a research plan • May cross license to settle interferences w/o following reg• Co-exclusive licenses now recognized

Implementation of 2006 Reg• NIH now licensing software but has been licensing biological materials for

years under its own statute. Not broken out in DoC 2010 annual report and may include copyrights (’08 HHS total-$3M).

• USDA is licensing biological materials but not software (’08 total-$3M)• Some agencies and labs concerned about licensing unpatented software

because of the 1-year statutory bar after sale and lack of statutory protection but not because of FOIA

• Expect agencies will license nonexclusively for paid-up royalties if no patent or application (’08 DoD total-$9K).

• Commercialization of software or MTAs may still be done under a CRADA but not clear if royalties may be retained by lab

• May want to trademark software name and license it with software• May still want to file a non-provisional application to keep options open• Recommend NDAs with potential licensees using 35 USC 205 and (b)(5)

exemption [Gov. trade secret]

Software Licenses Are Different

• Terms will be more like commercial copyright licenses than patent licenses

• Need to check source and authorship of code; may have non-USG authors or be “open”

• Need to have adequate documentation• Need to determine if licensee is a reseller or

user requiring unique expertise• May decide not to license software but release

with use restrictions

Training II: Software, Publications, IP, and Export Control IssuesTheory Codes

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

PRINCETON PLASMA PHYSICS LABORATORYREQUEST FORM FOR RESEARCH USE OF

THEORY AND COMPUTATION DEPARTMENT CODE LICENSEPlease answer the following questions so that we can expedite your request for a Research Use Code license. Items noted with a * are mandatory and your request will not be processed if these sections are incomplete.

Please identify the PPPL staff and code(s) requested.PPPL Researcher’s and Alternate Contact Names:_______________________________________________________________________________________Emails and Phone numbers: ________________________________________________________________* Name(s) of PPPL Theory and Computation Department code(s) requested:_____________ ___________________________________________________ (the “Codes)

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

Request Form ( continued)INFORMATION ON INSTITUTION AND RECIPIENT OF SOFTWARE

*Name of Institution: ________________________________(the “User’s Institution”)

• Full Address: ___________________________________________________________________

• U.S. Institution? Yes No . Foreign Institution? Yes___ No___ ☐ ☐• Country? ________________________* Name of person receiving the software (PRINT) ___________________(the “User”)• Title: ____________________________________________________________*

Phone: __________________ Fax number and E-mail ______________________

• Briefly describe research program the software will be used for: ________________________________________________________________

• Please mail this form to Jennifer Jones; Princeton Plasma Physics Laboratory MS-28; P.O. Box 451; Princeton NJ 08543-0451, or else fax it to (609)243-2662 and send an e-mail to Jennifer Jones ([email protected]) to let her know that the fax has been sent.

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

Part BPrinceton Plasma Physics Laboratory

P.O. Box 451Princeton, NJ 08543-0451

Managed by Princeton University and funded by the U.S. Department of Energy,LICENSE TERMS AND CONDITIONS

PPPL Theory and Computation Department code(s)WHEREAS, the Parties recognize the importance of developing fusion energy as a potential energy source for the future and the value of the collaborative research between their institutes in that field; and WHEREAS, PPPL seeks to further such collaborative research by providing the User with access to the Theory and Computation Department code(s) specified above (the “Codes”),

NOW, THEREFORE, and for good and valuable consideration, the sufficiency of which ishereby acknowledged, the Parties agree as follows:

1. To the best of PPPL’s knowledge, the Codes do not contain any sensitive or classifiedinformation or information that can be used for the design or development of nuclear,biological, or chemical weapons or of any weapons of mass destruction. The codes do not contain any proprietary or commercially owned information. PPPL provides the Codes “as is”, and makes no other representations or warranties with respect to the Codes.

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

LICENSE TERMS AND CONDITIONS

2. PPPL hereby gives the User a limited, revocable, non-transferable license to use the Codes only for peaceful fundamental scientific research related to plasma physics and/or fusion energy development in full compliance with the export regulations and any other applicable regulations or laws of the United States. PPPL may terminate and revoke this license at any time for any or no reason. This software is provided only for research use on the specified program and cannot be used for commercial purposes.

3. The User shall defend, indemnify and hold harmless PPPL for any claims or actions orproceedings arising from its use of the Codes or derivatives of the Codes in a manner notauthorized under this License.

4. The Codes are to be used solely to support fundamental scientific research in plasmascience and fusion energy. Scientific results from the use of the Codes are intended forpublication and dissemination in the open scientific literature.

5. The User agrees that it will not modify the Codes, nor parts of the Codes, for otherapplications, or share the Codes with other parties, or re-export the Codes to othercountries, without PPPL's prior written consent. If improvements are made to the Codes by the User, they shall be available to PPPL within three months of their creation.

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

LICENSE TERMS AND CONDITIONS

6. The User assumes responsibility for the proper use of the Codes, understanding that PPPL is not required to provide training or support, which will only be provided at PPPL’s sole discretion.

7. Additional distribution or sublicensing is not permitted.

8. The User understands that the Codes are ‘Research Codes’, and that the Code's suitability for specific analysis applications will require verification, and that the Codes are generally still under development.

9. The User understands that when publishing results from its use of the Codes in scientific publications, the Parties will acknowledge the authors of Codes or cite an appropriate Code reference.

10. The User is encouraged to provide advance copies of any publications to PPPL containing results from the Codes for PPPL’s review, prior to submission to a scientific journal. One purpose of the review is to assure that the fundamental research Export Control exclusion is not compromised and is only anticipated to be a temporary delay.

Training II: Software, Publications, IP, and Export Control IssuesEngineering, and Analysis Codes

LICENSE TERMS AND CONDITIONS

11. The User agrees to keep PPPL informed about the use of the Codes. Any problems detected in the Codes' calculations will be communicated to PPPL prior to discussion in publications or multi-institutional conferences. PPPL will, in turn, distribute known problem solutions and improvements in the form of Code updates as these become available.

12. This License is based on a currency free exchange between PPPL and the User and the User’s Institution.

13. The provisions of this License shall be applied in accordance with the laws and regulations of the United States. All disputes related to this License that the Parties are not able to resolve through good faith negotiations shall be resolved through binding arbitration pursuant to an arbitral body that is mutually acceptable to the Parties..

___________________________________ ______________________(signature of user) (date)___________________________________(user name - print)Please mail this form to Jennifer Jones; Princeton Plasma Physics Laboratory MS-28; P.O. Box 451; Princeton NJ 08543-0451, or else fax it to (609)243-2662 and send an e-mail to Jennifer Jones ([email protected]) to let her know that the fax been sent