Guide to the Ownership, Distribution and Commercial Development of M.I.T. Technology
PART 2. M.I.T. POLICY STATEMENTS
2.0 GENERAL POLICY STATEMENT
2.1 PATENT AND COPYRIGHTS POLICY STATEMENT
2.2 TRADE AND SERVICE MARKS
2.3 SOFTWARE ACQUISITION
2.4 WAIVER OF RIGHTS TO M.I.T.
INVENTORS AND AUTHORS
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2.0 GENERAL POLICY STATEMENT
The prompt and open
dissemination of the results of
M.I.T. research and the free
exchange of information among
scholars are essential to the
fulfillment of M.I.T.'s
obligations as an institution
committed to excellence in
education and research. Matters
of ownership, distribution, and
commercial development,
nonetheless, arise in the
context of technology transfer,
which is an important aspect of
M.I.T.'s commitment to public
service. Technology transfer
is, however, subordinate to
education and research; the
dissemination of information
must, therefore, not be delayed
beyond the minimal period
necessary to define and protect
the rights of the parties.
2.1 PATENT AND COPYRIGHT OWNERSHIP POLICY STATEMENT
With the exception of student
theses as described in Section
2.1.5, rights in inventions,
mask works, tangible research
property, and copyright
ownership of materials,
including software, made or
created by M.I.T. faculty,
students, staff, and others
participating in M.I.T.
programs, including visitors,
are as follows:
M.I.T. OWNED
(a) Patents, copyrights on software,
maskworks, and tangible research
property and trademarks
developed by faculty, students,
staff and others, including
visitors participating in M.I.T.
programs or using M.I.T. funds
or facilities, are owned by
M.I.T. when either of the
following applies:
(1) The intellectual property was
developed in the course of or
pursuant to a sponsored research
agreement with M.I.T.; or
(2) The intellectual property was
developed with significant use
of funds or facilities
administered by M.I.T., as
defined in Section 2.1.2.
(b) All copyrights, including
copyrighted software, will be
owned by M.I.T. when it is
created as a "work for hire" as
defined by copyright law, (see
Section 2.1.3) or created
pursuant to a written agreement
with M.I.T. providing for
transfer of copyright or
ownership to M.I.T.
INVENTOR/AUTHOR OWNED
Inventors/Authors will own
patents/copyrights/materials
when none of the
situations defined above for
M.I.T.-Ownership of intellectual
property applies.
2.1.1 SPONSORED RESEARCH AND
OTHER AGREEMENTS
PATENTS: Research contracts sponsored by
the Federal Government are
subject to statutes and
regulations under which M.I.T.
acquires title in inventions
conceived or first reduced to
practice in the performance of
the research. M.I.T.'s
ownership is subject to a
nonexclusive license to the
government and the requirement
that M.I.T. retain title and
take effective steps to develop
the practical applications of
the invention by licensing and
other means.
Contracts with industrial
sponsors provide that M.I.T.
retain ownership of patents
while the sponsor is granted an
option to acquire license
rights.
COPYRIGHT: Normally, research contracts
sponsored by the Federal
Government provide the
government with specified rights
in copyrightable material
developed in the performance of
the research. These rights may
consist of title to such
material resting solely in the
government, but more often
consist of a royalty-free
license to the government with
title vesting in M.I.T.
When a work is created under the
terms of other sponsored
research agreements, authors of
copyrightable works should be
aware that there may be
contractual terms relating to
the form of the report, advance
notice to the sponsor before
publication, and the like.
GENERAL: M.I.T. personnel and visitors
should contact the Office of
Sponsored Programs (OSP) for
information or assistance
regarding interpretation of
research contract terms; Lincoln
Laboratory staff and visitors
should contact their Director's
Office. The terms of such
sponsored research agreements
apply not only to inventions
made by faculty and staff, but
also to those made by students
and visitors, whether or not
paid by M.I.T., who participate
in performing research supported
by such agreements. It is
essential, therefore, that all
individuals participating in the
research be made aware of their
obligation to assign rights to
M.I.T. and sign Inventions and
Proprietary Information
Agreements as provided under
PART 5.
2.1.2 SIGNIFICANT USE OF
M.I.T.-ADMINISTERED RESOURCES
When an invention, software, or other
copyrightable material, mask
work, or tangible research
property is developed by M.I.T.
faculty, students, staff,
visitors or others participating
in M.I.T. programs using
significant M.I.T. funds or
facilities, M.I.T. will own the
patent, copyright, or other
tangible or intellectual
property. If the material is
not subject to a sponsored
research or other agreement
giving a third party rights, the
issue of whether or not a
significant use was made of
M.I.T. funds or facilities will
be reviewed by the
inventor/author's department
head or center director and a
recommendation forwarded to the
Technology Licensing Office (TLO),
in the form of the letter that
is Form 1 in Appendix A.
M.I.T. does not
construe the use of office,
library, machine shop or Project
Athena personal desktop work
stations and communication and
storage servers as constituting
significant use of M.I.T. space
or facilities, nor construe the
payment of salary from
unrestricted accounts as
constituting significant use of
M.I.T. funds, except in those
situations where the funds were
paid specifically to support the
development of certain
materials.
Textbooks developed in
conjunction with class teaching
are also excluded from the
"significant use" category,
unless such textbooks were
developed using M.I.T.
administered funds paid
specifically to support textbook
development.
Generally, an
invention, software, or other
copyrightable material, mask
work, or tangible research
property will not be considered
to have been developed using
M.I.T. funds or facilities if:
(1) only a minimal amount of
unrestricted funds have been
used; and
(2) the invention, software, or other
copyrightable material, mask
work, or tangible research
property has been developed
outside of the assigned area of
research of the inventor/author
under a Research Assistantship
or sponsored project; and
(3) only a minimal amount of time has
been spent using significant
M.I.T. facilities or only
insignificant facilities and
equipment have been utilized.
Use of office, library, machine
shop facilities, and of
traditional desktop personal
computers and Project Athena are
examples of facilities and
equipment that are not
considered significant; and
(4) the development has been made on the
personal, unpaid time of the
inventor/author.
2.1.3 WORKS FOR HIRE
EMPLOYEES: A "work for hire," as
defined by law, is a work
product created in the course of
the author's employment.
Copyright of the work product in
these situations belongs to the
employer. For example, results
of work assigned to staff
programmers or writers of
university publications are
considered to have been created
in the course of the author's
employment and are the property
of M.I.T. It is the policy of
M.I.T. that it shall own all
works for hire.
NON-EMPLOYEES: Under the Copyright
Act, copyright of commissioned
works of non-employees is owned
by the author and not by the
commissioning party unless there
is a written agreement to the
contrary. All M.I.T. personnel
are cautioned to ensure that
independent contractors agree in
writing that ownership of the
commissioned work is assigned to
M.I.T., except where special
circumstances apply and it is
mutually agreed that the author
will retain ownership.
2.1.4 INDEPENDENT WORKS
M.I.T. does not claim
ownership of copyrights in
scholarly books and textbooks,
articles and other scholarly
publications, nor to popular
novels, poems, musical
compositions, or other works of
artistic imagination provided
that such works are (i) created
by the personal effort of
faculty, staff and students; and
(ii) do not make significant use
of M.I.T.-administered
resources; and (iii) are not
governed by the terms of a
sponsored research or other
agreement.
Furthermore, in those situations
when such a copyright resides
with M.I.T. but does not
constitute a “work for hire,”
M.I.T. will upon the author's
request and to the extent
consistent with the intent of
the sponsor and the center
director or department head,
convey copyright to the author
of such work. An author
requesting a waiver should
submit Form 1 in Appendix A to
the TLO
2.1.5 THESES
The ownership of copyright
in theses is set forth in
Faculty Regulation 2.71.
Students will own copyright in
theses which do not:
(i) involve research for which the
student received financial
support in the form of wages,
salary, stipend, or grant from
funds administered by M.I.T.; or
(ii) involve research performed
in whole or in part utilizing
equipment or facilities provided
to M.I.T. under conditions which
impose copyright restrictions.
Where copyright ownership
is retained by the student,
however, the student must grant
to M.I.T. royalty-free
permission to reproduce and
publicly distribute copies of
the theses.
NOTE: Where significant use is made of
M.I.T. equipment or facilities
provided to M.I.T. without
copyright restrictions, students
own copyright in theses, per
(ii) above; however, software
code, patentable subject matter
and other intellectual property
contained in the theses are
subject to Section 2.1.2 above.
2.2 TRADE AND SERVICE MARKS
Trade and service marks relating to goods and
services developed at M.I.T. will be owned by M.I.T.
2.3 SOFTWARE ACQUISITION
When software and databases used at M.I.T. are
owned by users or third parties and are protected by copyright and/or other
laws, or subject to license or other contractual arrangement, it is the policy
of M.I.T. that users abide by any legal restrictions imposed by the owner of the
software or database. It is the responsibility of the owner of the protected
software or database to make the nature of the restrictions known to M.I.T.
2.4 WAIVER
OF RIGHTS TO M.I.T. INVENTORS
AND AUTHORS
When it has the right to do so,
M.I.T. may, if requested by the
inventors or copyright authors
and at M.I.T.'s discretion,
"stand aside" in those
situations where M.I.T. believes
that it would enhance the
transfer of technology to the
public, is consistent with
M.I.T.'s obligations to third
parties, and does not involve a
conflict of interest as set
forth below. By "standing
aside", M.I.T. agrees not to
exercise its contractual rights
to the technology, clearing the
way for the M.I.T. inventors and
authors to seek ownership.
Inventors and authors may
request that M.I.T. "stand
aside" by submitting the letter
that is Form 1 in Appendix A
In the case of Federal agency
sponsorship, any "stand
aside" by M.I.T. for a
patentable invention must be
made by releasing the invention
to the Federal government,
following which the inventor may
directly petition the agency for
a release of rights to himself
or herself. Federal research
agreements are generally subject
to a uniform patent law which
provides that universities take
title to resulting inventions
subject to certain obligations
concerning the exploitation in
the public interest, Federal
approval of any assignment of
ownership, preferences for
licensing, the retention by the
Federal government of certain
license rights, and march-in
rights. Decisions by the
Federal sponsors to permit
individual inventors to acquire
ownership are generally made on
a case-by-case basis with the
Federal Government retaining for
itself those rights previously
discussed.
Federal research agreements
presently vary widely with
respect to rights in
copyrightable technical data and
computer software, but in
general universities have the
right to copyright and to
control distribution of most
materials. Several major
agencies retain a large degree
of control over computer
software and will relinquish
control only under limited
circumstances.
In the case of industrial
sponsorship where the
sponsor acquires license rights,
M.I.T. usually must seek
approval of the sponsor prior to
releasing its ownership rights
in favor of the inventor or
author.
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