One of the most critical and important contracts a startup can focus on, and do correctly, is to properly license IP from a university so that it can be commercialized going forward, according to a video prepared by Peter Buckland of Wilmer Cutler Pickering Hale and Dorr LLP.

He explains that a common question he hears from entrepreneurs is about how to work with technology that they created at their universities, going forward in a commercial endeavor.

“In most cases, anyone that is in anyway being paid by a university to do research, the university owns that research and for many of the universities we work with in this area, whether it’s Stanford or Cal or others, they’re all pretty in tune with their mandate, which is to commercialize that technology,” he says in the video. And the best way to do that, he adds, is to partner with the people who created that technology.

Watch the video.

By Keli Johnson Swan
Scott & Scott LLP

Autodesk, like many other software publishers, is now offering subscription-based licenses instead of perpetual licenses. Customers tend to find the flexibility of subscription-based licensing appealing because those licenses allow for growth and changing work environments.

However, the license terms have specific conditions and requirements for installation and use of the software, specifically related to the rights to use older versions. The following are a few helpful suggestions to ensure that the software remains properly licensed and in compliance with the Previous Version Rights pursuant to the subscription license agreement.

1. Downgrades are limited to specific versions.

There are two ways to qualify for downgrade rights – a subscription license or purchasing Autodesk maintenance. Since Autodesk is gradually moving toward a subscription-only model for many of its products and phasing out maintenance, it is important to understand subscription licensing requirements in order to avoid any potential copyright infringement claims relating to noncompliance.

Autodesk provides a specific list of the prior versions eligible for downgrade rights, which may be found here. If a customer chooses to install a prior version and does not have maintenance or a perpetual license for the older version, the version installed must be on the list issued by Autodesk.

2. Specific serial numbers are required to install prior versions.

Once a customer identifies that a prior version is eligible for installation, it must obtain through its Autodesk account a previous version serial number. This is important because if a customer is faced with an audit, it must have the correct serial number for the prior version or risk incurring a penalty for noncompliance.

3. Maintain an accurate inventory of the serial numbers and versions installed to avoid noncompliance issues during an audit.

Routine self-audits should be administered periodically to uninstall any prior versions for which a customer no longer has a license. These installations should be identified and checked against Autodesk’s current list of eligible software for downgrades. Additionally, it is important for the customer to ensure that it obtains the proper serial numbers for each previous version of Autodesk products installed.

Even if a customer owns a license and has the right to downgrade the software, without the proper serial number, Autodesk may seek monetary damages and claim copyright infringement violations. Customers should familiarize themselves with Autodesk’s most recent license requirements in order to avoid any potential copyright infringement claims.