Guide to the Ownership, Distribution and Commercial Development of M.I.T. Technology
PART 3: TECHNOLOGY EVALUATION, PROTECTION AND DISSEMINATION
3.0 RESPONSIBILITY
3.1 DISCLOSURE
3.2 PATENTS: PROTECTION
3.3 COPYRIGHTS: ASSERTING AND REGISTERING
3.4 TRADE AND SERVICE MARKS: ASSERTING AND REGISTERING
3.5 MASK WORKS: ASSERTING AND REGISTERING
3.6 TANGIBLE RESEARCH PROPERTY3.7 OTHER TRP
3.8 OPEN DISTRIBUTION OF
COPYRIGHTED WORKS OTHER THAN SOFTWARE
3.9 DISTRIBUTION OF SOFTWARE FOR RESEARCH
PURPOSES AND VIA OPEN SOURCE
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3.0 RESPONSIBILITY
The Technology Licensing Office
(TLO) is responsible for
facilitating the transfer of
M.I.T. technology for public use
and benefit. The TLO evaluates,
obtains proprietary protection
for, and assists in the
distribution of technology for
research purposes, as described
in this PART 3. TLO also
assists in the commercial
development of selected
technology by identifying
potential markets and
negotiating license agreements
as described in
PART 4.
3.1 DISCLOSURE
The initial step in establishing
contact with the TLO is usually
the submission of an M.I.T. Technology Disclosure Form
(See
Form 2 in Appendix A),
except at Lincoln Lab where
clearance from the Lincoln Lab
Directors Office is first
required. The disclosure form
can be obtained from the TLO.
When submitted, the Technology
Disclosure Form will initiate
action by the TLO to investigate
the patenting (or other methods
of intellectual property
protection) and marketing of the
technology unless accompanied by
a letter requesting other action
by M.I.T., such as a
waiver of
M.I.T.'s ownership rights in the
technology (Form
1 in Appendix A).
SPONSORED
PROGRAMS: The terms of
sponsored research and other
agreements normally create
obligations with respect to the
reporting of inventions,
technical data, and
copyrightable works such as
software. In particular,
inventions and copyrightable
works developed under sponsored
research should be promptly
reported to the TLO by
submitting a Technology
Disclosure Form.
OTHER INVENTIONS:
Inventions or technology
developed at M.I.T. either as
work-for-hire or with
significant use of M.I.T. funds
or facilities, should also be
submitted to the TLO using a
Technology Disclosure Form.
The Technology Disclosure Form
serves to report technology to
the TLO. A case number is given
to the technology reported and
the case will be assigned to a
TLO Licensing Officer for
evaluation.
3.2 PATENTS: PROTECTION
Although
patent protection is sometimes
sought for various noncommercial
reasons, such as professional
status, M.I.T. will not seek
protection for inventions which
are not commercially
attractive--even if the
invention is intellectually
meritorious--unless otherwise
requested by the sponsor of the
research. M.I.T. will normally
seek patent protection on
inventions in order to pursue
commercial licensing and to
comply with the terms of
sponsored research agreements.
The procedures for obtaining
patents on inventions are
described in
PART 4 -- COMMERCIAL DEVELOPMENT.
It is important to understand at
the outset that any publication
(or even verbal public
disclosure) which describes an
invention prior to filing for a
patent may preclude patenting in
foreign countries altogether,
and may also preclude protection
in the United States unless a
patent is filed within one year
from publication. The
implications of publication upon
patent rights should be
discussed with the TLO and a
decision on patent filing
reached promptly so that
publication will not be delayed.
3.3 COPYRIGHTS: ASSERTING AND REGISTERING
Copyright protection of books,
articles, publications and
computer software code is sought
in order to recognize authorship
and protect the integrity of the
work. It is also essential in
order for M.I.T. to license
copyrightable materials to
commercial book publishers and
others and to comply with the
terms of sponsored research
agreements.
A
copyright is established at the
time expression is fixed in a
tangible medium. In order to
maintain the copyright for the
period prescribed under the
copyright statute, notice of
copyright must be affixed to the
copyrightable material. Failure
to affix the proper notice will
cause the copyright to be lost
after a certain period of time
has elapsed from the first
publication of the work.
The following notice is to be
applied on M.I.T.-owned works to
protect the copyright:
"Copyright © [Year]
MASSACHUSETTS INSTITUTE OF TECHNOLOGY. All rights
reserved."
The date in the notice should be
the year in which the work is
first published. No notice
other than the foregoing is to
be used for M.I.T.-owned works.
Further, for added copyright
protection, certain works should
be registered with the United
States Copyright Office using
its official forms.
Questions concerning copyright
notices and registration should
be brought to the TLO.
3.4 TRADE AND SERVICE MARKS: ASSERTING AND REGISTERING
A
trade or service mark may be
used to protect those names and
symbols associated with certain
M.I.T. activities and events and
with certain technology
developments such as computer
programs. Prior to registration
for trademark protection, the
designation "TM" after a
trademark or "SM" after a
service mark will give adequate
notice of a claim of ownership.
The designation "®" for a
trademark may only be used after
Federal registration.
The use of trade and service
marks to protect M.I.T. owned
technology or to designate M.I.T.
as the origin of a product,
event, activity, service, or the
like, may be instituted only at
the direction of the TLO. It is
important to note that trademark
protection carries with it
certain obligations on the part
of the holder of the mark.
Therefore, requests for use and
registration of trade or service
marks on behalf of M.I.T. must
be referred to the TLO.
3.5 MASK WORKS: ASSERTING AND REGISTERING
Protection of a mask work
commences with the registration
of its initial commercial
exploitation. If registration
for protection has not been made
within two years of the initial
commercial exploitation, mask
work protection may be lost and
the work entered into the public
domain.
To protect mask work rights, the
following notice is to be
applied on all M.I.T.-owned
semiconductor chip products
which incorporate mask works:
"Mask work "M" or (M)
MASSACHUSETTS INSTITUTE OF
TECHNOLOGY"
Questions concerning mask work
notices and registration should
be brought to the TLO.
3.6 TANGIBLE RESEARCH PROPERTY
Tangible research property (TRP)
such as biological materials and
computer software are frequently
patented or copyrighted as
appropriate and then licensed
for commercial purposes.
However, these and other forms
of TRP, including those under
commercial license, generally
are simultaneously distributed
solely for research purposes
either under simple letters of
understanding or more formal
licenses.
The following sections deal only
with dissemination of TRP for
research and other noncommercial
purposes. Commercial licensing
of TRP is covered in
PART 4.
-
3.6.1
DISTRIBUTION OF TRP FOR SCIENTIFIC RESEARCH
-
In keeping with the traditions of academic
science and its basic objectives, it is the policy of M.I.T. that results of
scientific research are to be promptly and openly made available to others.
Since the traditional modes of dissemination through scholarly exchange and
publication are not fully effective for most TRP, it is M.I.T. policy that those
research results which have tangible form should also be promptly and openly
made available to other scientists for their non-commercial scientific research,
unless such distribution is inappropriate due to factors such as safety, the
need to more fully characterize or develop the TRP prior to distribution, or
unless such distribution is incompatible with other obligations.
-
3.6.2 CONTROL OF TRP
- Where TRP is developed in the course of research
which is subject to the terms of a sponsored research or other agreement,
control over its development, storage, distribution, and use is the
responsibility of the principal investigator, who will consult with the TLO or
the Director's Office at Lincoln Lab. In other cases, significant use of M.I.T.
resources will be presumed, so control over TRP rests jointly with the center
director or department head and with the TLO. The responsibility for control
includes determining if and when distribution of the TRP is to be made beyond
the individual laboratory for scientific use by others. These responsibilities
also apply to TRP that originated with third parties and was given to M.I.T
under a Materials Transfer Agreement or other agreement.
3.6.3 TRP WITH POTENTIAL
COMMERCIAL VALUE
Scientific exchanges should
not be inhibited due to potential commercial considerations. However, TRP may
have potential commercial value as well as scientific value, and the principal
investigator who may wish to make TRP available for scientific use in a manner
which does not diminish its value or inhibit its commercial development should
seek guidance from the TLO.
The normal mechanism for
commercialization of TRP is through licensing agreements as set forth in
PART 4.
3.6.4 TRP IDENTIFICATION
Each item of TRP should have an unambiguous
identification code and name sufficient to distinguish it from other similar
items developed at M.I.T. or elsewhere. The TLO should be consulted for
assistance in developing appropriate identification systems.
3.6.5 DISTRIBUTION OF BIOLOGICAL TRP TO RESEARCH COLLEAGUES
Biological materials may in some cases be
patentable and licensed for commercial purposes under various types of patent
licenses. They are also a form of tangible research property which can be
distributed for commercial and/or research purposes with or without patent
protection.
Biological TRP owned by M.I.T. may usually
be distributed for non-commercial research purposes with only minimal conditions
attached. Any such distribution is subject to an agreement by the recipient
that commercial development or commercial use or further transfer of the
biomaterial is not to be undertaken. An example of such an agreement for use of
biomaterials may be found in the Appendix to this policy (See Form No. 3, "Materials Transfer Agreement",
in Appendix A). In addition, the principal investigator may wish to control
subsequent use, for example, by requiring recipients to follow a specific
research protocol in the use of the biological materials.
When distributing biological TRP to research
colleagues outside the laboratory, costs of the materials and handling may be
recovered from the recipient, and returned to the account which funded those
costs. When costs are charged for TRP distribution, adequate documentation must
be maintained for audit purposes.
If there is a possibility of biohazard or other
risk associated with the transport, storage, or use of a particular biological
TRP, or if the recipient is likely to use the TRP for clinical research, the TLO
should be contacted for advice on the appropriate form of disclaimers of
liability and indemnities.
If the biological TRP was developed under a
sponsored research agreement or obtained from third parties through a Material
Transfer Agreement the TLO should be contacted to advise on possible contractual
obligations with respect to the TRP prior to its distribution for noncommercial
purposes. Distribution of biological TRP which is of the subject of a patent or
patent application should be coordinated through the TLO.
Distribution of TRP other than biological
TRP should follow the procedures outlined in this policy for computer software.
Where consistent with M.I.T.'s obligations to
third parties, M.I.T. faculty, staff or student authors, with agreement of their
center director or department head and all of their co-authors, may request to
have the works openly distributed through royalty-free licenses, or may request
that the works be placed in the public domain.
Authors may request that otherwise copyrightable
material, including computer software, be placed in the public domain if such
action will promote widespread use, for example by providing a means to
establish a new standard such as a computer operating system.
In responding to a request for placement in the
public domain, M.I.T. will weigh the advantages of improved access, the
complexity of the work and whether or not it is ready for effective public use,
whether its quality can be maintained, and the author's reasons for seeking this
mode of dissemination.
The distribution of M.I.T.-owned computer
software to colleagues for research purposes must be coordinated with the TLO if
the software has potential commercial value, if the principal investigator
wishes to control subsequent use, or if it is subject to the terms of a
sponsored research agreement.
The TLO will provide wording for the distribution
agreement necessary to preserve commercial value and will arrange for trademark
and copyright registration as appropriate.
The TLO should also be consulted if the authors
of the software wish to distribute it via Open Source mechanisms. The TLO will
advise on sponsor obligations, if any, and will advise on the acceptable forms
of Open Source distribution to prevent any inadvertent effect on other M.I.T.
intellectual property.
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