Overview of MIT's Intellectual Property Rights Policies
Types of Intellectual Property
(The following represents my summary of the contents of MIT's 1988 Policies and Procedures relating to Intellectual Property.)
Intellectual (intangible) property can be classed into a few main groups:
Patents
This is a government grant to "exclude all others from making, using, or selling the invention within the U.S. and its territories" for a specified time period. In essence, the government is granting a monopoly for a specified number of years. The reasoning behind granting this exclusive right is to give incentive for inventors to make their invention publicly known, in order to facilitate technology advancements. Patentable inventions must consist of an 'idea' that must serve some 'utility.' In addition, they must be 'novel' and 'non-obvious' to an average person 'skilled in the arts of the specified field.'
Copyrights
Copyrights allow the owner to possess the "exclusive right to reproduce the work, prepare derivative works, distribute by sale or otherwise, and display or perform the work publicly." A copyright protects the 'artistic expression of the work' but not the 'idea.'
Trade and Service Marks
These are markings that may be a "word, name, symbol or device (or any combination) adopted by an organization to identify its goods or services which distinguishes them from the goods and services of others." Trade and Service Marks protection serve to protect unfair practices by lesser known companies attempting to gain market share by mimicking the "word, name, symbol or device (or any combination)" that an established company uses to market its product.
Mask Works
This is relevant to the semiconductor industry. Mask works are "a series of related images representing a predetermined, three-dimensional pattern of metallic, insulating, or semiconducting layers of a semiconductor chip product."
There are two other special groups:
Tangible Research Property
Research property that include "integrated computer chips, computer software, biological organisms, engineering prototypes, engineering drawings and other property which can be physically distributed."
Trade Secrets
Trade secrets are generally used in industry to maintain a long-term advantage over competitors by keeping proprietary information private. This is done so by contractually binding to secrecy persons who come into contact with trade secrets.
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MIT Policy
Fundamental Guiding Principle
MIT stands firm in its belief that results from research conducted at MIT must be "promptly" and "openly disseminated" and be consistent with the idea of "free exchange of information," in line with MIT's commitment to public service. As such, MIT holds education and research to be of paramount importance.
Determination of Ownership of Invention & Copyrights
Three criteria determine the ownership of an invention:
- "developed in the course or pursuant to a sponsored research or other agreement" - If this condition is met, the intellectual property belongs to MIT or the sponsor of the project, in accordance with the terms and conditions of the research agreement. [Patents resulting from work for a Federal Agency would be subject to non-exclusive license to the government. Copyrights resulting from work for a Federal Agency would also be subject to a "royalty-free license to the government with the title vesting in MIT."]
- "created as a 'work-for-hire' by operation of the copyright law, or created pursuant to a written agreement with MIT" - If this condition is met, the ownership rights belong to MIT.
- "developed with the 'significant use of funds or facilities' administered by MIT" - If this condition is met, the ownership rights belong to MIT.
In the matter of interpreting 'significant use of funds or facilities, "MIT does not construe the provision of office, library, machine shop, facilities or traditional desktop computers of Project Athena as constituting significant use of MIT space or facilities, not construe the payment of salary from unrestricted accounts as constituting significant use of MIT funds, except in those situations where the funds were paid to support the development of certain materials."
Otherwise, the inventor has sole rights to the invention. An important issue not to be overlooked is:
"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 an agreement."
With regard to theses, MIT's position is that students will own the copyright on theses subject to the following:
"Students will own copyright in theses which do not involve research for which the student received financial support in the form of wages, salary, stipend, or grant from funds administered by MIT; and/or involve research performed in whole or in part utilizing equipment or facilities provided to MIT under conditions which impose copyright restrictions."
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Research Sponsor's Rights to Intellectual Property
(The following represents my summary of the contents of MIT's Research Sponsorship Agreement.)
Title Rights
"Title to any invention ... shall remain with MIT." Also, "MIT may file a patent application
- at its own discretion or
- at the request of Sponsor and at Sponsor's expense."
Automatic Granting of a License
The sponsor of the research automatically "shall be entitled to a non-exclusive, non-transferable, royalty-free license for internal research purposes, and shall further be entitled to elect one of the following alternatives [additional licensing options] by notice in writing to MIT within six months after notification..."
Additional Licensing Options
The three options are:
- "non-exclusive, non-transferable, world-wide, royalty-free license... [for the] sponsor to make, have made, use, lease and sell products embodying or produced through the use of such invention"
- "royalty-bearing, limited-term exclusive license... to the Sponsor to make, have made, use, lease and sell products embodying or produced through the use of such invention"
- "licensing to third parties by MIT" and sharing "any royalty income derived from licensing the patent rights."
[The default option is option 3.]
Copyrights
Here, again the rights rest with MIT. MIT does, however, grant the sponsor "an irrevocable, royalty-free, non-transferable, non-exclusive right and license to use, reproduce, display, distribute, and perform all such [works produced in accordance to the research agreement] copyrightable materials."
Proprietary Information
MIT is obligated to treat any proprietary information provided with the research agreement as confidential for a period of 5 years as of the date of the agreement.
Right to Review Publications
The sponsors have a right to review publications on research that is being funded by them for a period of thirty days "for patent purposes and to identify any inadvertent disclosure of the sponsor's proprietary information."