Uber ATG | Mcity IP Negotiation
Securing New Tech to Increase Development Velocity
Real-world engineering development and testing turnaround times were too slow. Our track was our most precious resource, and it was bottlenecking Autonomy's ability to get timely feedback.
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University of Michigan's "Mcity" had developed software that could help Uber ATG make leapfrog forward, combining our large track and automation with Mcity's track control and routing software.
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Others before me had identified Mcity as a potential opportunity, but it had fallen off the hardware initiatives list.
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The challenge was to renew the team's passion for this project, engage with Mcity leadership, and negotiate an IP agreement that would be a long-term win-win for the university and ATG.
It's All in the T's & C's
ATG was committed to making the IP transfer happen. Mcity had RTK/GPS integrated with its test track software that would make it much easier to track multiple targets at once and develop scenarios that consider the speeds and time to collision when generating new test cases. Add to that that you could simply "draw" the desired routes, it was an easy decision.​
Mcity was equally committed to the deal. Having a major player in the autonomous driving world like Uber ATG adopt their IP for commercial use was in direct alignment with their mission. ​
As the Director of Test, I led the negotiations with Mcity's leadership team, my peers at Uber ATG, and with both parties' lawyers.​
There were tricky issues to navigate in the contract. "What if an accident happened due to an error in Mcity's code, or Uber ATG's use of that code?" "If Uber ATG created derivative work (it would), who owns the rights to those derivatives?" "If Uber ATG agreed to let Mcity use the derivatives, would Mcity then be able to relicense that work to our competitors?"​
It took a few months to work through the framework for rights, liabilities, indemnities, scope, and support exchanges. It took a few more months to cover the same ground repeatedly only to arrive at the same clauses and agreements!​
At the end of the negotiations, my team and I were able to successfully close on the multi-million-dollar deal for two key pieces of autonomous vehicle testing IP, with full rights to modify the code and retain ownership and control of any derivatives.
