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
3.7 Other TRP
3.8 Open Distribution of Copyrighted Works Other Than Software
3.9 Distribution of Software for Research Purposes and Via Open Source
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.
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.
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.
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.
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.
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.
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.