Consulting and Software Licensing Agreements

Some informal notes by Soumen Chakrabarti

This page may be useful to you if you are looking to license software produced by me and my group at IIT, or hire me as a consultant.

To my knowledge, IIT allows the interaction mode elaborated in this page, but does not enforce it; other rules may hold for other faculty members. This page is only meant to be informative; the practices described here are not officially approved by IIT for all possible agreements.

The Office of the Dean (R&D) has final and binding jurisdiction within IIT on these matters. This document is just an initial guide, and is probably lighter reading than legalese.

The procedure to set up a licensing and/or consulting agreement is as follows:

The prospective client (you) establish contact with me.
We agree on the terms and conditions via emails and/or meetings, and draft the documents.
You send the draft agreements (including any non-disclosure agreement) with a letter asking for my services to the Associate Dean (R&D). Please copy the R&D office and me as well. Contact emails are here.
The Dean approves the project by signing the papers and we set a timeline for work and payment.
The Dean's office sends you invoices in due course.
You make checks (usually) to "The Registrar, IIT Bombay" but ship them to me.

Software licensing agreements

When IIT owns IPR via a software embodiment, IIT is the party which draws up the licensing agreement with the client (to mutual satisfaction).
The agreement may be for an exclusive or a non-exclusive license.
My group hosts a secure code server (no login shell access except by special arrangement).
Any code stored on this server and written by IIT staff or students belongs completely to IIT at all times.
In keeping with the permissive standards of the software industry, IIT or I offer no warranty of any kind for any length of time.
But I (or my group) will provide handholding support for a limited amount of time to help you exploit the product in the manner intended in the agreement.
Completion of payment by the client implies that the client is satisfied with the product and that the client indemnifies IIT against any subsequent failures and losses caused directly or indirectly by using said software.
The client has check out access for its own use, but agrees to keep any content of this server confidential wrt third parties.
If the agreement is non-exclusive, IIT can give other clients check out access too
The client may be given check-in access if they want to push bugfixes and modifications of a general nature whose publication does not damage their competitive advantage.
But the contents of this code server always belongs to IIT and can be made known by IIT to any third party at any time if the license is non-exclusive.
It is advisable that the client not modify the checkout from IIT "in-place" without syncing with IIT; because then the code becomes an unmaintainable copy without revision control as far we IIT is concerned.
Meanwhile, the client does integration on their computer where they may or may not choose to give IIT access.
If we (IIT) need to do consolidation work "on site" we will usually need login shell access. In which case, all confidentiality requirements laid out by the client in the agreement will be in effect wrt contents of the client's computer.
Anything the client develops around and on top of the IIT code such as applications, GUI, etc. belongs exclusively to the client and will never be taken out of the client's computer.

Consulting agreements

A client can choose to include handholding fees within the license fee, or make a separate consulting agreement. If the IPR protection needs are very different across IIT's background IPR and the client's foreground development needs, it's easiest to make two separate agreements.

If the client has specific IPR needs, I usually get the client to draft the consulting document with mutual agreement.
Under IIT's current consulting norms, it is possible for the client to retain 100% of the consulting IPR.
In case the consulting work is very close to my current research interests, I sometimes ask for a consideration for publication after patent protection.
Even here IIT generally prefers that jurisdiction be in Mumbai, but external clients do not always agree.
It is possible to lay down a resolution clause in which, if an unfortunate occasion arises, the client must take IIT to a court in Mumbai, and conversely IIT must take the client to a court of the client's choice in the client's base country.