Xilinx university program terms issue

Question

I work at a university and want to get some FPGA development boards sponsored by Xilinx for labs. They have a donation program, so I filled a request. But after the final submission I've been presented with the following license agreement, which I find quite reasonable, except the two following points.

I couldn't find this agreement publicly accessible on their website, so see my gist for full text. Also, "XUP" stands for "Xilinx University Program".

7) Recipient institution grants a worldwide, royalty-free, transferable, sub-licensable, perpetual license to Xilinx, Inc. on any intellectual property rights, including but not limited to rights under patents, copyrights, mask works, and trade secrets, derived from, or related to, Xilinx products, technology, or confidential information to which the recipient institution obtains access in to under the XUP (the “Derivatives”); provided however, that institution shall have no obligation to disclose or provide such Derivatives to Xilinx.

After removing all visual noise, I got that Xilinx wants to have a license to everything I'm going to develop using their boards. I especially fear here words "perpetual" and "trade secrets". Which implications may this point have? And how wide they can be? May they involve someone besides me, my students or someone actually working with the donated FPGAs?

For example, if my students are designing a microprocessor for their coursework, does Xilinx get the right to use the design to manufacture and sell the chips? Or what if I develop some device using their FPGA, use it to obtain some result, and then write a paper; which rights Xilinx gets then?

8) If requested, the School Representative agrees to share relevant teaching materials with XUP. If deemed appropriate, XUP may disseminate materials to other XUP member institutes.

Does it mean that if I have written a textbook for my FPGA course, I must share it to Xilinx if they wants so? What if I used third-party materials for my book, or wrote it in co-authorship?

Are these terms okay to accept at all? I would appreciate if someone clarify this points for me. And, by the way, I'm in Russia while Xilinx resides in the US.

Answer 1

I am not a lawyer. This is not legal advice. It is how I would look at this agreement, and reflects how I might evaluate the situation. I have only partial information, and context always matters. I read many license agreements, NDAs, and other matters that affect IP.

Section 7 doesn't seem to cause a problem. If you disclose anything to them related to their stuff, they can use it for anything, with anyone, forever. But, you have no obligation to disclose anything. If you don't tell them, they can't use it, and you can't sue them for misusing it.

Section 8 could be more of a problem. The question if how is "relevant" determined, and it seems vague. Unlike section 7 where there is a full enumeration of all the cases, section 8 is unclear.

In any case, both you and your institution's legal department should be comfortable, and you should have guidelines from your legal department showing how they would interpret the agreement, and what they expect from you as you operate subject to them.

If this is a large enough deal, your institution should support you and may negotiate alternative terms with the vendor. If the deal is too small for the legal team to engage, then you may want talk with the vendor about changing, or even eliminating, most of the agreement. Some parts are likely to be non-negotiable (such as limits on their liability, and probably section 7). Some parts (like section 8) they could be willing to strike.

Section 7 protects their critical interests. It prevents a customer from suing them for IP infringement, be it intentional, accidental, coincidental, or in any other way. Section 8 helps them improve their offering.

Whatever the final agreement, if there is any agreement at all it will probably require review from your institution.

Again, I am not a lawyer. I have not trained as a lawyer. This is not legal advice.

Answer 2

Many universities have a patent and confidentiality agreement that is signed by all members of a university who may produce work that could produce money. This applies to students and employees in actually academia departments (such as engineering) to non-academic employees such as a human resources professional. If work was produced on the university's time and resources, the university has rights to claim it as its own. There may be a situation involved where if a product was produced as part of a collaboration (i.e. senior research projects) and then went on to make money, the University could agree to give a percentage of the profit back to you. This should be discussed before any work is done. Your example of the microprocessor would be owned by the university because you developed it on their time, money, and resources.