FAQ: Submitting an Invention

Why should I submit a Technology Disclosure?
How do I submit a Technology Disclosure?
How do I know if my discovery is an invention?  Should I submit a Technology Disclosure?
When should I complete a Technology Disclosure?
Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?
Should I disclose research tools?
Should I disclose software?
What rights does a research sponsor have to any discoveries associated with my research?
What is considered a public disclosure of an invention?
Should I refrain from publishing a paper or making an oral disclosure of an invention before TLO has filed for a patent?
Questions that may arise when filling out the Disclosure Form

 


Why should I submit a Technology Disclosure?

MIT faculty, staff or students should disclose an invention to TLO if they believe their research could be commercialized for public use and benefit. Inventions from academia are typically in the very early stages of development and require a significant investment before bring a product to market. Intellectual property protection often provides the necessary incentive for a company to pursue such a project.

The TLO will assess whether to begin the legal protection process and work to identify outside development partners. If government funds were used for your research, you are required to file a prompt disclosure, which will be reported to the sponsoring agency. Similar requirements may exist for other sponsored projects.

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How do I submit a Technology Disclosure?

You can download a Disclosure Form and simple instructions. Technology Disclosures are assigned weekly to a Technology Licensing Officer. Contact the TLO if you have any questions.

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How do I know if my discovery is an invention?  Should I submit a Technology Disclosure?

You are encouraged to submit a Technology Disclosure for all developments that you feel may solve a significant problem and/or have significant value. If you are in doubt, contact the TLO to discuss the potential invention. We can also advise on alternatives to licensing.

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When should I complete a Technology Disclosure?

You should complete a Disclosure Form whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications. Once publicly disclosed (i.e., published or presented in some form to non-MIT listeners), an invention may have restricted or minimal potential for patent protection.

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Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?

Yes, but since patent rights are affected by these activities, it is best to submit a Disclosure Form well before any public communication or disclosure of the invention. There are differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection. Be sure to inform the Technology Licensing Officer assigned to you of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/masters thesis, publication, or other public presentation of the invention.

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Should I disclose research tools?

Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as “tools” in the research process. Research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties and generate revenue for your laboratory. Other research tools (such as new separation processes) may need to be patented so that a company will invest in the engineering development to make the process broadly useful. If you have research tools that you believe to be valuable, the TLO will work with you to develop the appropriate protection, licensing and distribution strategy. We will also help you in distributing research materials at zero or minimal charge to other academic collaborators while preserving the materials’ commercial potential.

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Should I disclose software?

Yes, the TLO assists inventors and authors in licensing software under a variety of distribution strategies. In addition to licensing software code for commercial development and distribution, the TLO licenses research code for non-commercial and/or academic purposes and assists authors in offering software via open source licenses. If you have software that you believe incorporates a patentable process, you should complete the MIT Invention Disclosure Form as to the patentable process and fill-out the MIT Software Code Disclosure Form as to the software code. Inventors of the process need not be (and likely are not) identical to the authors of the code. Each Disclosure will be assigned its own case number, though they will likely be licensed together. We will discuss licensing strategies with the principal inventors and authors of the software.

The Disclosure Forms should be filled out completely, including sponsorship information, a description of the software and original signatures. If both Forms are used, they should reference each other in the description of the software. For more on Software Licensing, click here.

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What rights does a research sponsor have to any discoveries associated with my research?

The Sponsored Research Agreement should specify the intellectual property (IP) rights of the sponsor. MIT retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the intellectual property arising from the research. Often, sponsored research contracts allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of the research. Even so, the sponsor generally will not have contractual rights to discoveries that are clearly outside of the scope of the research (and which do not use funds from the research agreement). Therefore, it is important to define the scope of work within a research agreement.

Sponsored research agreements are handled by the Office of Sponsored Programs and OSP representatives work closely with the TLO on IP issues in sponsored research agreements. If you have questions about sponsored research, please visit the OSP website or contact them by calling 617-253-2762.

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What is considered a public disclosure of an invention?

Anything that is readily available to the public (a journal paper, a conference presentation, a publication on the World Wide Web, even a dissertation indexed at the library) that describes the basic ideas in enough detail that someone else would be able to make and use the invention; i.e., those ideas that are new.Showing or telling these ideas may also constitute disclosure, as does selling or offering for sale a prototype of the invention.

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Should I refrain from publishing a paper or making an oral disclosure of an invention before TLO has filed for a patent?

If possible, we highly recommend that you disclose your invention well before your invention is to be publicly disclosed to ensure that it may be properly protected.

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Questions that may arise when filling out the Disclosure Form:

Why does the TLO need my work and home addresses?

We need your work address to contact you and your home address to mail royalty checks to you. Please keep us updated if either address changes.
 

Why is the contract/grant information important to TLO?

Under federal law, MIT is required to report to the Government inventions created under sponsored research. If the University decides not to take title to such an invention (that is, decides not to keep it), then the Government has rights to it. If the Government doesn't wish to pursue it, the invention may be assigned back to the inventors. Non-Government sponsors may also have intellectual property clauses and obligations attached to such sponsorship with which TLO must comply.
 

How detailed should the description of the invention be?

As detailed as possible. All information provided to TLO will be kept confidential. Without adequate information, TLO cannot perform a complete evaluation of the invention's licensing potential, nor can we obtain an accurate legal opinion as to whether it is patentable. The first meeting of the Technology Licensing Officer and the inventor(s) is a time when the invention may be discussed in greater detail.
 

Why are the dates of conception and disclosure important?

As of March 16, 2013 the U.S. patent system switched to a "first-inventor-to-file" system, described in the highlights of the America Invents Act. The dates of disclosure are important because in the U.S. an inventor has one year from the date of public disclosure (this includes orally at a public meeting, in writing, or offering it for sale) in which to file a patent application. Once that year has passed, the invention cannot be patented. Moreover, foreign patent rights are lost once an invention has been publicly disclosed.

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