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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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