	MIT Community
Invention Disclosure Tech Transfer Process Policies Ownership Preserving Your Patent Rights For Students Material Transfer Agreements Software Lincoln Laboratory The Broad Institute The Whitehead Institute The Entrepreneurship Center

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 PROPERTY

Next Section
Previous Section
Table of Contents

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. The 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, 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 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.

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 From. The TLO will forward a copy of the Technology Disclosure Form to the OSP Intellectual Property Officer, who is responsible for discharging M.I.T.'s obligations to research sponsors.

OTHER PROGRAMS:
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. Independently-owned technology need not be disclosed to the TLO unless the owner of the technology desires the TLO to commercialize the technology. In such cases, the technology should be submitted to the TLO using the 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. 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 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, and publications 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:

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 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 OSP Intellectual Property Officer or the Director's Office at Lincoln Lab. In other cases, significant use of Institute resources will be presumed, so control over TRP rests jointly with the laboratory 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 laboratory for scientific use by others in accordance with the terms of this policy.

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 are in many cases 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 research purposes only with 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. The Materials Transfer Agreement is an example of such an agreement. 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, 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 part of a patent or patent application should be coordinated through the TLO.

3.6.6 DISTRIBUTION OF COMPUTER SOFTWARE FOR RESEARCH PURPOSES

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 provides the service of distribution of software for noncommercial research use, charging recipients a nominal amount to cover costs associated with reproduction and distribution. In addition to the handling of administrative details, including mailing, the TLO also makes arrangements for collecting departmental costs associated with providing software for noncommercial use and returning these costs to the department.

3.6.7 OTHER TRP

Distribution of TRP other than biological TRP should follow the procedures outlined in this policy for computer software.

Next Section
Previous Section
Table of Contents

Massachusetts Institute of Technology