Discussion: Intellectual Property Rights and Responsibilities- A Student's Guide
Author(s):
Chin Yee Ng
These answers were compiled from the interviews.
What do these students need to consider in order to respect
the intellectual property rights of the industrial
sponsor?
Their first concern should be with determining what sort of
agreement has been struck between the laboratory and its
sponsors. Discussion with their professor, the principal
investigator, is called for.
Copies of the agreements can be obtained at the Office of
Sponsored Programs. The terms and conditions of the
agreements will spell out in detail important points of
consideration. Though MIT has generic model agreements,
sometimes negotiations with individual sponsoring companies
result in changes in the terms and conditions. However, such
alterations are not to conflict with certain basic principles
that MIT upholds. "In keeping with the traditions of academic
science and its basic objectives, it is the policy of MIT that
results of scientific research are to be promptly and openly
made available to others." MIT is committed to the "free
exchange of information" and maintaining that "technology
transfer is subordinate to education and research."
The students must consider the intellectual property
portfolio already in existence in their laboratory. For
example, they need to become aware of all patents that have
been granted to the laboratory and all licensing agreements
that are in force. The sponsoring company may have taken out a
limited-term exclusive license on some of the technology that
was developed and hence may have significant impact on the
students' decisions.
Care must also be taken if any confidential information of
the sponsoring company has been released to the students in
order for the research to proceed. Confidentiality of such
information must be respected.
Checklist:
- Discuss intent with principal investigator
- Read terms and conditions of agreements
- Find out the technology licensing situation
- Respect the company's confidential information
Where can they go to obtain answers on this topic? Is there
an office in MIT where X1 and his colleagues can go to for
assistance? What kind of assistance can they get?
There are four specific sources of information:
- They should visit the Office of
Sponsored Programs for information on the actual
agreements. "The office of Sponsored Programs (OSP) is
responsible for the negotiation, execution, and
administration of all MIT agreements with external sponsors
of research grants and contracts and for ensuring the rights
of the sponsors in the technology developed under external
grants and contracts are protected."
- The Technology Licensing Office can provide them
with both information on the current standing of the licensed
technology from the laboratory and also information on how
they can go about licensing this technology for their
eventual establishment of a company. The Technology Licensing
Office can also provide helpful pointers on how to go about
creating a start-up company. "The Technology Licensing Office
has two principle goals. The first is to facilitate the
transfer of public use and benefit of technology developed at
MIT. The second, where consistent with the first, is to
provide an additional source of unrestricted income to
support research and education at MIT."
- There is also an Intellectual Property Counsel, to whom
they can turn for discussion of legal issues surrounding the
terms and conditions of the agreements.
- Finally, they should discuss the issue with the Principal
Investigator of the laboratory. The Principal Investigator
would have had frequent contact with the sponsors and would
also be a good source on intellectual property generated in
the laboratory to date.
In collaborative research work, there may be disputes on how
the rights of resulting intellectual property can be allocated.
In such cases, a consultation with the Ombudsperson may be
useful to lessen the possibility of ill-feelings and promote
fairness.
It is possible that the professor is also interested in
establishing a company to make use of the technology that is
developed. In such a situation, it might be best for the
professor to discuss this issue with his/her department head,
and perhaps even consult with members of the Outside
Professional Activities Standing Committee.
As a last resort, MIT's "Vice President for Research is the
final arbiter of any disputed issues related to intellectual
property, or the interpretation of this policy."
Checklist:
- Office of Sponsored Programs (OSP)
- Technology and Licensing Office (TLO)
- MIT's Intellectual Property Counsel
- Principal Investigator
- Ombudsperson (fair distribution of credit)
- Outside Professional Activities Standing Committee
How is NSF's requirement for public disclosure balanced
against the industrial sponsor's need for confidentiality?
This is actually not a matter of balance. In situations
where government sponsorship and industrial sponsorship
overlap, the government's requirements must have priority. That
notwithstanding, in order to maintain MIT's tax-exempt
standing, research results must be openly disseminated. Because
MIT is an educational entity, one of its fundamental operating
principles is that there be free transfer of knowledge.
Consequently, research conducted at MIT must be available to
the public for inspection - the "free exchange of information"
principle.
When a government agency is funding a research effort
(whether wholly or partially) they require that non-exclusive
rights be assigned to them. "MIT's ownership is subject to a
non-exclusive license to the government..." This is to
ascertain that the government will be able to build on the
results of the research as they see fit in the future. The
government may even sponsor another grant for the continuation
of research in the area at a different research body. Their
non-exclusive license would allow them to transfer the
necessary technology to this research body for further
research. Another example would be if the developed technology
is found to be of use to the military, the government would
then (as a result of this non-exclusive license agreement) be
able to transplant the technology for military use.
There are two points of view relating to joint research
funding by the government and an industrial sponsor. Some
companies are reluctant to enter into such an agreement for
fear of losing exclusivity (which would be one of their
licensing options) by joint-funding research with a government
entity. Instead, the industrial sponsor(s) may take the
position of sponsoring a closely related area of research such
that they would have the option to exclusively license the
developed technology. However, if the non-exclusive rights to
the government entity are for 'internal use only,' the company
can still have exclusivity in the marketplace. In fact, it
would be beneficial to enter into such joint
government-industry funded research projects, as both sides get
to enjoy greater benefits for less capital investment. [MIT's
Media Laboratories function differently from the rest of
laboratories on campus as they are treated as a Consortium.
Thus only non-exclusive licenses can be granted to the sponsors
of research.]
Checklist
- Government requirements overrule all others.
- MIT's Operating Principles must be upheld.
- No confidential research, period. No exceptions.
What are the criteria for determining how much of what is
learned in the laboratory is considered confidential
intellectual property and how much of it is considered
reasonable to be made use of by this group of students? Are
there any skills that a graduate student acquires from research
that the industrial sponsor has a right to prevent the student
from using?
With only a few exceptions, the students are free to make
use of everything they learn in the laboratory. Infringement of
exclusive patent rights is one of the exceptions. The students
(though they may be co-inventors) cannot use their invention
without proper licensing of the technology. Unlike a
sole-inventor technology, a multi-inventor technology requires
that some form of licensing agreement must be entered into
before the technology can be exploited. This serves to protect
the rights of all parties involved in the invention.
There may be instances where it is not entirely clear who
has claims on the technology. For example, if the research is a
collaborative institute-industry effort where there is strong
involvement by both sides, some form of an agreement is
necessary to determine the rights of each party on the
newly-developed technology.
Again, should the sponsors have divulged confidential
information to the group of researchers, their confidentiality
must be respected. Generally, the Principal Investigator will
determine the appropriateness of divulging such information to
his/her researchers and would have put it in no uncertain terms
the nature of the information. As a safeguard against
unintentional public disclosure of confidential information,
the sponsoring company has a right to review papers sent for
publications as stated below:
"MIT will be free to publish the results of research
performed under work performed under this agreement after
providing the Sponsor with a thirty day period in which to
review each publication for patent purposes and to identify any
inadvertent disclosure of the Sponsor's proprietary
information."
Other than respecting exclusive rights and trade secrets,
there are no specific skills that the industrial sponsor has a
right to prohibit the students from using - assuming no prior
contractual agreement has been entered into on the
contrary.
When tangible research property come into play, "MIT will at
a minimum, reserve the right to use and distribute TRP
(Tangible Research Property) for non-commercial research
purposes." Generally a separate agreement is entered into
between MIT and the sponsor on the resulting tangible research
property.
Checklist:
- Check for infringement of exclusive rights
- Respect sponsor's trade secrets
- Skills learned may be used freely
- Check specifics of tangible research property
What are the rights and responsibilities of X1 and his
colleagues?
First and foremost, it is important to note the following
MIT policy statement.
"The terms of such sponsored research agreements apply not
only to inventions made by faculty and staff, but also to those
made by students and visitors, whether or not paid by MIT who
participate in performing research supported by such
agreement."
See the Invention and Proprietary Information
Agreement for more detail on the specific rights of
students.
The students are bound by this agreement to "disclose
promptly and assign to MIT" all intellectual property
which:
- "are developed in the course of or pursuant to a
sponsored research";
- "result from the significant use of MIT funds or
facilities" or;
- "result from a work-for-hire funded by MIT."
There are certain inherent rights that belong to the
students also. Some examples follow. They have a right to a
copy of their laboratory notebook (the original is to remain
with the laboratory). They have a right to a copy of their work
should it be in the form of a computer program (or in some
fields, some of the reagent that they created) for personal
use. This however does not in any manner grant to them free
reign to commercialize their work.
They are responsible to continue to report inventions and
other intellectual property developed in the laboratory. To
withhold such information would be most unethical.
A possible sub-scenario is that a student engages in
unethical information withholding behavior. The student could
conceivably attempt to withhold critical discoveries while
engaging in research at the laboratory. The question now lies
in how one can prevent the student from keeping this
information a secret until he/she graduates. Discussions on how
such unethical behavior can be curtailed did not lead to
possible concrete action that can be taken. In fact, it appears
that the best that can be done in such a situation is to wait
and observe the activities of the student. Should the student,
soon after graduation, file a patent application on technology
directly related to the area of research, the Technology and
Licensing Office may investigate into the matter and bring
charges where it deems proper.
Checklist:
- Determine the rightful owner of an invention by
considering the following clauses:
- "in the course of sponsored research"
- "work-for-hire"
- "significant use of funds and property"
- Right to personal use of copies of original work
- Responsibility to report all intellectual property
developed
How would the scenario outlined above be treated
differently if X1 and his colleagues were working in a
commercial company doing the same research and development
work?
Commercial companies operate under very different rules than
educational entities. Generally, companies are more protective
of their intellectual property. In fact, practices of using
trade secrets (as opposed to open dissemination of information)
are used as a measure to compete against rival companies.
Patenting technology would render the information no longer a
secret although an exclusivity of use may be granted for a
fixed number of years. As such, many companies have strict
rules of operation that require new recruits to sign off their
rights on intellectual property discoveries.
There are 'no-use' clauses and 'non-competing' clauses to
guarantee the company's exclusivity in use of their trade
secret or other in-house technology. The 'no-use' clause would
prohibit the usage of the company's proprietary information
after leaving the said company. The 'non-competing' clause
would prohibit the formation of a competing company upon
leaving the said company in the same area of business. In
industry, oftentimes, trade secrets are used as the primary
means of getting an edge over a competitor. Due to the
importance of trade secrets, an employee is frequently bound by
contractual agreements.
An interesting point to note is that employment agreements
may be drawn up in such a manner as to render all inventions by
the employee of the said company to become the intellectual
property of the company (even if the intellectual property
discovery is not related to the employee's work function) so
long as the some division of the said company (or parent
company) does work in the area of the invention. Thus, it is
possible for a person who works for a multi-national,
multi-divisional company in the electronics division to invent
a new form of gearing system (a purely mechanical mechanism)
but would therefore lose rights to the invention to the company
because a subsidiary of the parent company did indeed
manufacture such gears.
Checklist:
- Company policy specific
- Spelled out in employment agreement or subsequent
additional confidentiality agreements.
- May contain specific clauses on 'no-use'
- May contain specific clauses on 'no-competition'.