Guide to the Ownership, Distribution and Commercial Development of M.I.T. Technology
PART 1: INTRODUCTION
1.0 INTELLECTUAL PROPERTY AND RELATED RIGHTS
1.1 PATENTS AND PATENT RIGHTS
1.2 COPYRIGHTS
1.3 TRADE AND SERVICE MARKS
1.4 MASK WORKS
1.5 TANGIBLE RESEARCH PROPERTY
1.6 TRADE SECRET
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1.0 INTELLECTUAL PROPERTY AND RELATED RIGHTS
The material set forth in this
document covers the ownership,
distribution, and commercial
development of technology
developed by M.I.T. faculty,
staff, and students and others
participating in M.I.T.
programs. These policies apply
equally to the main campus, to
the Lincoln Laboratory, and to
other M.I.T. programs. (Lincoln
Laboratory employees are
considered sponsored research
staff for purposes of this
document). The term
"technology" is broadly defined
in this document to include
technical innovations,
inventions, and discoveries, as
well as writings and other
information in various forms,
including computer software.
The principal rights governing
the ownership and disposition of
technology are known as
"intellectual property" rights,
which are derived primarily from
legislation granting patent,
copyright, trademark and
integrated circuit mask work
protection.
In some instances,
distribution and
commercialization of technology
may be accomplished by the
transfer or licensing of the
intellectual property rights,
such as patents and copyrights.
In other instances, distribution
and commercialization of
technology may be aided by or
depend upon access to the
physical or tangible embodiment
of the technology, as in the
case of biological organisms,
plant varieties or computer
software.
Therefore, this policy will
define not only the ownership,
distribution, and
commercialization rights
associated with the technology
in the form of intellectual
property, but will also define
policies and procedure which
govern use and distribution of
the technology in its tangible
form.
The following overview of
intellectual property rights is
limited in scope. The M.I.T.
Technology Licensing Office (TLO)
should be contacted for further
information regarding any of
these rights.
1.1 PATENTS AND PATENT RIGHTS
A
patent is a grant issued by the
United States Patent and
Trademark Office giving an
inventor the right to exclude
all others from making, using,
or selling the invention within
the United States, its
territories and possessions, for
a period which expires 20 years
from the date of filing of the
utility patent application.
Patents may also be granted in
foreign countries; procedures
for filing, regulations for
patentability, and term of
patent grant vary considerably
from country to country.
To be patentable in most
countries, an invention must be
new, useful, and nonobvious. In
the United States, a grace
period of 12 months from the
first written public disclosure
of an invention is allowed to
file a patent application. In
most foreign countries, an
invention is unpatentable unless
the application is filed
before public disclosure
(written or oral). However,
if one has filed in
the United States prior to
public disclosure, the applicant
has 12 months to file in most
non-U.S. countries without
losing filing rights.
1.2 COPYRIGHTS
As provided in copyright law, a
copyright owner has the
exclusive right to reproduce the
work, prepare derivative works,
distribute by sale or otherwise,
and display or perform the work
publicly.
Under federal copyright law,
copyright subsists in "original
works of authorship" which have
been fixed in any tangible
medium of expression from which
they can be perceived,
reproduced, or otherwise
communicated, either directly or
with the aid of a machine or
device.
For an individual author,
copyright protection of a work
extends for the author's life
plus 70 years. For employers,
copyright protection of a work
extends for 95 years from the
date of publication as of
November, 1998.
In contrast to a patent which
protects the "idea", copyright
covers the "artistic expression"
in the particular literary work,
musical work, computer program,
video or motion picture or sound
recording, photograph,
sculpture, and so forth, in
which the "expression" is
embodied, illustrated, or
explained, but does not protect
the "idea."
1.3 TRADE AND SERVICE MARKS
A
trade or service mark is a word,
name, symbol or device (or any
combination) adopted by an
organization to identify its
goods or services and
distinguish them from the goods
and services of others. In the
United States, trademark
ownership is generally acquired
through use of a term to
identify origin of goods or
services, although effective
November, 1989, legislation
enables organizations to file
for trademark protection based
on intent to use a particular
term. Trade or service mark
ownership is not dependent upon
federal or state registration,
but upon use of the mark.
Registration of trade and
service marks may be obtained on
both the state and federal
levels. However, to apply for a
federal registration of a mark,
it must be used in interstate
commerce.
1.4 MASK WORKS
A
mask work is defined as a series
of related images representing a
predetermined, three-dimensional
pattern of metallic, insulating,
or semiconducting layers of a
semiconductor chip product.
Under the Semiconductor Chip Act
of 1984, mask work protection
extends for 10 years and gives
the owner of the qualifying mask
work exclusive rights to its
exploitation. Mask works are
registered with the United
States Copyright Office.
Failure to apply within 2 years
of the initial commercial
exploitation results in the
termination of the exclusive
rights.
1.5 TANGIBLE RESEARCH PROPERTY
The term "tangible research
property" refers to those
research results which are in a
tangible form as distinct from
intangible (or intellectual)
property. Examples of tangible
property include integrated
circuit chips, biological
organisms, engineering
prototypes, engineering
drawings, and other property
which can be physically
distributed.
Although tangible research
property may often have
intangible property rights
associated with it, such as
biological organisms which may
be patented or computer software
which may be either patented or
copyrighted, where appropriate,
tangible research property may
be distributed without securing
intellectual property protection
by using some form of
contractual agreement, such as
formal contract, loan agreement,
letter agreement, or user
license as further set forth in
this document.
1.6 TRADE SECRET
The law of trade secret may be
applied to almost any secret
which is used in business and
gives the owner of the trade
secret a competitive edge over
others. It is used to protect
valuable proprietary information
and is a commonly used form of
protection for software. Unlike
copyrights, there is no federal
trade secret statute. Trade
secret laws are determined by
the individual states but
generally adhere
to similar principles. The most
important aspect of this type of
protection is that of secrecy.
The protection will remain
legally valid only as long as a
trade secret is maintained. In
order to maintain protection
while a trade secret is being
used, it is necessary to bind
those individuals having access
to the secret by a contractual
agreement not to disclose it.
Such agreements are called
nondisclosure or confidentiality
agreements.
M.I.T.'s policy with regard to
the protection of third parties'
confidential material used in
conjunction with research
projects is specified in the
Institute's Research Policy
Statements, which are available
from the Office of Sponsored
Programs.
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