License software to third parties

Topics about software licensing

On these pages you will find all relevant information on licensing software to third parties as well as regulations, best practices and other relevant information on software. The information on licensing software to third parties applies regardless of whether the third party is, for example, an industry, an ETH Zurich Spin-off, a startup or a research institution.

These pages are continuously updated and new information is added to reflect the latest regulations and practices at ETH Zurich. So please check these pages from time to time for the latest information on software.

General Information

Software is copyright protected as soon as the code is written (please see here). The "individual character" requirement under copyright law is minimal, such that courts have ruled computer programs insufficiently original to be eligible for copyright protection in only a very small number of cases.

Therefore, any computer program is in principle copyright protected and necessarily requires a license for distribution to third parties, regardless of whether the computer program is small or large. Thus, not only software packages, but also e.g. scripts that you have created for scientific publications, and that you may want to publish together with a scientific publication, requires a license when distributed.

According to the ETH Zurich Guidelines, all licenses for software (except for open source licenses, please see below) that is distributed by ETH Zurich to a third party, must be examined/drafted by us, and approved and signed by the Vice President for Knowledge Transfer and Corporate Relations. The responsible professor must acknowledge and sign the license agreement as well. Approval from Vice President for Knowledge Transfer and Corporate Relations is obtained by us (DownloadRSETHZ 440.4, "ETH Zurich Exploitation Guidelines" (PDF, 267 KB)).

According these ETH Zurich Guidelines, all software that is provided to a third party, with or without a license fee, must be reported to us completing the software disclosure form (please see below "Procedure for licensing software to a third party"), except for software distributed under an open source license (please see below). So, the distribution of software code to third parties (universities, research institutes, industry, etc.) or the distribution through download portals (Google Play Store, Apple Store, etc.) must be reported to us and the required license must be prepared and approved by us.

Important!

Please contact first the Research Contract Group for advises in case the software has been generated within a research collaboration with a third party and you want to hand over the software to the research collaboration partner(s), or pre-existing software shall be used in a research collaboration with a third party;
Or in case the software has been generated within a EU project and you want to hand over the software to the EU project partner(s), or pre-existing software shall be used in a EU project with a third party, please contact first EU GrantAccess.

In both cases, reporting the software to us with the software disclosure is most likely not necessary.

Open source licensing

An exception to the above rules applies to open source software with an open source license recognized by the Open Source Initiative.

Please see here for any information and the rules concerning software licensed under an open source license.

Software on portals

For information concerning software placed on download portals (Google Play Store, Apple Store, etc.), please see the information here.

Software from a third party

For software licenses to purchase from a vendor (e.g. MatLab, LabView, Cadence, MentorGraphics, etc.) or software license agreements coming from another third party (e.g. scientific software from other research institutions) and to be reviewed/negotiated, please contact the ID Procurement & Compliance.

Marketing of software

If you would like to market (license) the software, please contact us. We will be pleased to advise you of the options for commercial exploitation and to provide you with support in this regard. Your software will be evaluated, potential licensees will be contacted and we will negotiate the license agreements. In addition, we will invoice any agreed license fees to the licensee and distribute this income internally. Please also note the information available under "What happens to licensing revenues?".

Procedure for licensing software to a third party

If you have already a potential licensee for your software and you want to license such software to a third party, we will first evaluate whether ETH Zurich can enter into an agreement with the licensee (third party). In case ETH Zurich has the right to license the software to a third party, we will draft a license agreement and negotiate with the third party the terms of such license agreement. After the signature of the license agreement, and during the period in which the license is in force, we will also invoice, collect and distribute the license fees according to the signed license agreement and the ETH Zurich guidelines.

The basic steps of the procedure for licensing software to third parties are explained below. For software licensed to ETH Zurich Spin-offs, please see also the additional information below.

Reporting (disclosure) of software to us

According to ETH Zurich exploitation guidelines software, not subject to an open source license recognized by the Open Source Initiative (open source software), that is provided to a third party or that will be exploited by ETH Zurich must be reported to us using the DownloadSoftware Disclosure Form (PDF, 3.8 MB).

To start the licensing process for software, please send us a completed and signed software disclosure form.

We will assess whether ETH Zurich can enter into an agreement with a third party through the information contained in software disclosure form. For this, it is of utmost importance that the information contained in the software disclosure form is complete and correct.

Important:

Since software is often subject to frequent modifications, we recommend to complete the software disclosure form only in case either a licensee has been already found, or if the developer(s)/professor(s) of the software wants that we make an attempt to exploit the software.

NEW! Soon! To the online submission of the software disclosure form.

Assessment on the rights to the software

The information contained in the software disclosure form allows us to establish whether ETH Zurich has the right to exploit the software or not and in particular, that no third party has any right in the software or in part of it which may restrict the use or expoitation by ETH Zurich of the software. The right by ETH Zurich to exploit the software depends mainly on:

Who has developed the software.
Third party code contained in the software or linked to the software.
Contract(s) under which the software was developed or the developers were hired.
Third party software (e.g. from a software vendor) used to develop the software.

Verification if an export license is required (if necessary)

If the licensee is a foreign company or institution, we will verify together with the protected pageExport Control Office of ETH Zurich whether the software may be exported outside the borders of Switzerland/Lichtenstein or transferred to an embargoed nations, entities or individuals, and whether or not an export authorization from the State Secretariat for Economic Affairs (SECO) is required.

For more information about Export Control on software, please see also here.

Drafting and negotiating a license for the software

The negotiation process will take some time and often in the initial phase requires the presence of the developer(s) or the professor(s) responsible for the software to establish the correct terms of the agreement that reflects the business, based on software, or the use of software by the third party.

Initially a "term sheet" is negotiated with the third party. The term sheet is a small document (1-3 pages) containing mainly the economic terms of the license. The validity of the term sheet is normally for 3-4 months. After the term sheet has been signed, and during the period of validity of the term sheet, the license agreement is drafted, negotiated and signed. For the majority of software licenses a standard template is used as document for the license agreement.

Uploading of software to the ETH Data Archive

Generally, the software is the object of the software license agreement and ETH Zurich needs a copy, centrally stored, of the source code and the related documentation of the software for legal purposes.

Latest prior to the signature or the final approval by the Vice President for Knowledge Transfer and Corporate Relations, the source code and related documentation must be uploaded to the ETH Data Archive. A detailed handout with screenshots provides a description in English of the necessary steps for the first account registration as well as for the software upload. Please use the CLOSED Source Software procedure of the handout. In addition, we will communicate you a reference number necessary to upload the software.

If you are using the ETH Data Archive for the first time, you must register there. A user account will then be set up for you which is valid for the registration of software. The activation of your user account usually takes place within one working day.

Only authorized personnel of our group and selected personnel of the ETH library has the permission to access the uploaded software after the software has been uploaded.

Please contact us for advice if you have any doubts.

Signature of license agreement

Any license agreement must be signed by the Vice President for Knowledge Transfer and Corporate Relations. The responsible professor must acknowledge and sign the license agreement as well. Signature and approval from Vice President for Knowledge Transfer and Corporate Relations is obtained by us.

The Vice President for Knowledge Transfer and Corporate Relations signs the license agreement last. Before the Vice President for Knowledge Transfer and Corporate Relations sign the license agreement the software must have been uploaded to the ETH Data Archive and the license approved by us. After the verification and approval, the license agreement is sent by us to the Vice President for Knowledge Transfer and Corporate Relations for the signature.

Invoices and license fee distribution

After the license agreement has been signed, and for the duration of the license, we will invoice, collect and distribute the license fees agreed in the software license agreement. Please also note the information available under "What happens to licensing revenues?".

Terms of a license agreement

Please see here for further information.

Additional information for ETH Zurich Spin-offs

ETH Zurich can sign a license agreement only with a registered company. Therefore, the whole licensing and negotiation process can only start when you are about to establish the company. Please also note that the software specified in the software disclosure form must match the software that will eventually be licensed to the company. If you are constantly modifying and developing the software, we recommend that you complete the software disclosure form close to the start of the license negotiations.

Please allow enough time for the negotiations. As a rule, the negotiation takes up to 1-2 months and should start at the earliest 2-3 weeks before the establishment of the company.

To start the negotiation process for an ETH Zurich Spin-off, please send us also a business plan together with the completed software disclosure form. The business plan should contain at least the following:

At least a 5 year outlook for the expected revenues;
The gross profit for the sold products/services;
The cost structure of the sold products/services and,
The description how the software from ETH Zurich is related to the sold products/service.

Important!

No company, not even an ETH Zurich Spin-off company, may use property (e.g. software) of ETH Zurich without an appropriate agreement with ETH Zurich. This applies in particular to intellectual property of ETH Zurich such as software. The ETH Zurich Spin-off company is allowed to use the software only after a license agreement has been signed.