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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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