IPIA Obligations for IPIA Signatories
Federal regulations and sponsored research contracts don’t merely assume that the Inventions and Proprietary Information Agreement (IPIA) will be signed—they assume that IPIA Signatories will comply with the obligations outlined in that contract. For example, federal regulations require IPIA signatories to report inventions conceived during federal research projects to the Technology Licensing Office (TLO) and to sign any paperwork necessary to patent that invention. The IPIA codifies those obligations.
The IPIA obligates Required IPIA Signatories (View MIT Policy 13.1.4) to:
- disclose certain inventions, software, mask works, and tangible property to the TLO;
- assign ownership of such Intellectual Property to MIT;
- execute all papers necessary to enable MIT to maintain legal protection for such Intellectual Property;
- prepare and maintain Supporting Information related or relevant to such Intellectual Property (View MIT Policy 13.1.1);
- make available all Supporting Information that might be required for MIT to protect such Intellectual Property;
- deliver promptly to MIT all Materials and Supporting information ;
- not disclose a third party’s confidential information to MIT (for example, the trade secret of a previous employer);
- not disclose MIT's confidential information to a third party; and
- not use MIT's confidential information for a non-MIT purpose;
Federal funding contracts specifically require MIT to promptly report any inventions developed during a federal research project; many of our industrial and foundation sponsors expect similar regular reporting. This makes the obligation to disclose inventions particularly important.
Inventors should be aware that it is critical to execute any papers (such as the IPIA, an invention disclosure, or a patent assignment) relevant to confirming the assignment of an invention to MIT, particularly in the context of a patent filing. Without proper signatures on invention disclosure and assignment documents, it might become impossible for MIT to protect that invention.
Any questions regarding these obligations should be directed to the TLO.