Mtg notes from CLARAty mtg with IP office

Mar 18 2003

Attendees: Issa Nesnas, Tara Estlin, Jennifer Schlickbernd, Grace Fisher-Adams, Carmen Lam

Topic: IP/ITAR issues for CLARAty repository

Explained general repository setup to Jennifer and Grace. Included discussion of university and other center partners.

Distinction between pure JPL vs. collaborative items

Who owns IP?

Depends on contract terms

University contract usually grants university rights

Get copies of CMU and Univ of Minnesota contract

Make sure statement of work mentions central repository

If not, may want to amend

Learned difference between subcontractors (CMU, Univ of Minn, Ames – under CLARAty task contract) and task plans (other tasks funded under MTP that will use CLARAty)

Extend contract for first and task plan for second if need to extend coverage or access to software

Remote access forms (for outside user accounts on our machines)

Goes through security

We sponsor them

Might need to do this for all outside user accounts

Check with Ed Momjian

EIS/ISIS has procedure, background forms

IP liability issues

Task plans (with universities) – other tasks through Mars Tech, not directly under CLARAty

Will need government use license for ASPEN/CASPER

Can coordinate with Jennifer Schlickbernd

Will need to work with PI or task plan manager (I believe they need to request it)

Task plan (with Ames)

IP and Export office would like everyone to be civil servants

Not an option – only Maria is a civil servant

If not, all software needs to be marked with statement of limited rights (?)

Issa suggested putting marking when checkout code (as opposed to marking every file)

In order to approve repository access, JPL will need Raj Shea (from Ames Export Administrator’s office) and Ames patent counsel (Raj Padea) to sign off on process and verify Ames list of personnel are

U.S. persons

Bound to confidentiality

Subcontractors (contracts directly under CLARAty)

As part of license, it covers our IP and export provisions

Need to verify

Go through procurement office / contract negotiator

List s/w: CLARAty, ASPEN, CASPER

License will be for Caltech s/w (pure JPL s/w)

Subsequent version can be specified in license for lifetime of task (e.g., now have version 1, later will have version 4, etc.)

If new technology added will need to resubmit for new NTR but won’t have to redo contracts/licenses

Remote access forms through security

Things are more complicated for mixed JPL/outside center s/w

Open source discussion

Jennifer: ASPEN/CASPER will likely not be approved for this since approved for commercial use by CalTech

Open source for rest

Several things need to happen:

ITAR/Export approved

Caltech IP office will have to say not interested or approve

Legal will have to look over issue

Rich Wolfe (associate director - Office of Tech Transfer) will need to sign off

will likely not want to sign off on mixed IP software

may not like signing off on technology not yet developed

Rights to derivatives

If CMU changes so many lines of code (of e.g., CASPER) we have rights to it

Should be in language for ASPEN/CASPER section for subcontracts and task plans

ASPEN/CASPER has been licensed for commercial use through CalTech

If we ever had university collaborator that wasn’t under contract then would need to go to CMU and write memorandum of understanding

Issa doesn’t think this would happen

Plan now is to go with public model (i.e., open source) first

Might be good for open source effort to put language to that effect in contracts now