Open Source Software

Berkeley Lab is managed by The Regents of the University of California (“The Regents”) under a contract between U.S. Department of Energy (“DOE”) and The Regents. By virtue of the University of California’s (“UC”) systemwide intellectual property policies as well as delegations of authority starting from The Regents to the UC President (e.g., The Regents’ Standing Order 100.4), Berkeley Lab is authorized to grant licenses or transfer its rights in intellectual property (“IP”) owned by The Regents, but only to the extent that such IP rights are within the control and jurisdiction of Berkeley Lab and subject to DOE regulations.

Therefore, Berkeley Lab may not grant licenses or otherwise encumber any patents, copyrights, or trademarks created at and under the control and jurisdiction of another UC campus (and vice-versa), without the other campus’s consent. A license grant of IP rights beyond the delegated authority violates UC’s policies and standing orders, and is considered by UC to be invalid and unenforceable.

The specific limited delegated authority granted to UC locations for IP matters means that Berkeley Lab can bind only itself regarding IP licenses, including open source software (“OSS”) licenses. Some OSS licenses – notably General Public License version 3 and Apache License version 2.0 – contain a patent license requiring each contributor to software licensed under such OSS licenses to provide a royalty-free, irrevocable license to others for any relevant patent claims owned or controlled by the contributor. Such licenses are usually intended to bind the legal entity whose employees are contributing to or publicly distributing the OSS project. Because the legal entity for Berkeley Lab may be considered The Regents, absent the limited delegated authority for patents, the possible effect of Berkeley Lab entering into such patent-granting OSS licenses might be that all relevant patents owned by The Regents (not just those within control of Berkeley Lab) would be encumbered. To this point, The Regents considers such licenses as voidable and/or unenforceable to the extent the license requires a particular campus or unit of The Regents to agree to a covenant beyond the scope of that campus’s or unit’s delegated authority. In other words, the official with appropriate delegated authority at Berkeley Lab can agree to an “open” patent license for only any relevant patents within Berkeley Lab’s jurisdiction, but not for any other patents owned or controlled by The Regents.

It is, therefore, important to involve the appropriate official with delegated authority at Berkeley Lab before entering into OSS licenses for IP owned by The Regents and under the control and jurisdiction of Berkeley Lab. At Berkeley Lab, that official is the Chief Technology Transfer Officer, currently Russell Carrington who leads the Intellectual Property Office (IPO). Any IP created at Berkeley Lab or by Berkeley Lab employees is likely owned by The Regents and must be formally reported to IPO before the technology is distributed or licensed to anyone outside of Berkeley Lab, even if it is to be distributed for free or via an OSS license. Among other things, the purposes of such reporting are to ensure that, prior to distribution: (1) Berkeley Lab has the appropriate rights and authority to license or otherwise distribute the software; (2) the OSS license is appropriate for the software and its contemplated distribution; and (3) Berkeley Lab is in compliance with its DOE requirements.

For questions about this notice, please contact Berkeley Lab’s IPO: [email protected].