Frequently Asked Questions

Typically, tangible property or 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 tangible property 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 to distribute research materials at zero or minimal charge to other academic collaborators while preserving the materials’ commercial potential.

Download the Research@MIT app to disclose research tools or tangible property.

Whenever you feel you have discovered something unique with possible commercial value, you should complete an invention disclosure. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications including websites or social media. Showing or sharing these ideas may also constitute a public disclosure, as does selling or offering for sale a prototype of the invention. Once publicly disclosed, an invention may have restricted or minimal potential for patent protection.

If you have already submitted a disclosure, inform the TLO of the deadline for your publication/poster or presentation and to determine whether a patent filing is first necessary. Publishing in advance of a patent application being filed may result in loss of patent rights. If possible, we highly recommend that you disclose your invention several months before your invention is to be publicly disclosed to ensure that it may be properly protected.

Under federal law, MIT is required to report inventions created under federally funded research. If the Institute decides not to take title to such an invention (that is, decides not to keep it), then the invention is returned to the Government under its primary ownership rights. If the Government doesn't wish to pursue it, the invention may be assigned back to the inventors. Non-government sponsors, such as corporations, may also have intellectual property license rights included in sponsored research agreements with which MIT must comply.

All contributors to the ideas leading to an invention should be mentioned in your disclosure, even if they are not MIT employees. The TLO, along with legal counsel, will determine the rights of such persons and their associated institutions. It is prudent to discuss collaborations (preferably before they begin) with the TLO to understand the implications for any arising inventions.

Rights granted to research sponsors vary according to the contract put in place. For more information reach out to OSATT Core at osatt@mit.edu.

As of March 16, 2013, the US patent system switched to a "first-inventor-to-file" system, described in the highlights of the America Invents Act. The dates of public disclosure are important because foreign patent rights are lost once an invention has been publicly disclosed. In the US 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, but it is best to file before the public disclosure. Once that year has passed, the invention cannot be patented.

Federal funding regulations (35 US Code Chapter 18 § 200-212, the Bayh-Dole Act) specifically require federally funded research entities to have, on file for every person participating in a research program, an agreement to assign ownership of certain intellectual property to the research entity. Following in the footsteps of the federal government, industrial and foundation research sponsors require MIT to own and control certain intellectual property as a condition of receipt of research funds. Failure to have an individual’s signed IPIA on file puts MIT at risk of default of such regulations and obligations.

The purpose of the Intellectual Property Policy is to encourage the free exchange of intellectual property by putting the responsibility for its protection into the hands of the Institute and not the individual. The mission of MIT’s Technology Licensing Office is to protect (e.g., via filing patents) and license MIT-owned intellectual property to third parties such as start-up companies or corporations. By signing the IPIA and transferring ownership of intellectual property to MIT, you are placing that intellectual property into MIT’s hands to preserve it for your own further research and development while fulfilling the Institute’s mission and the obligations to third party funders of research.

There are a few very rare exceptions to the IPIA requirements. These include some federal employees, participants in Knights Fellows Program, HHMI employees, and Whitehead appointees are exempted from the requirement. HHMI employees are obligated to sign the IPIA only if they remain at MIT after their HHMI appointment has concluded. The requirement—to have a signed IPIA form on file—otherwise applies to all persons having an opportunity to participate in research at the Institute.

MIT expects its visitors and research affiliates to expressly confirm that they have no obligations to their employers that would conflict with the obligations codified by the IPIA. MIT’s Technology Licensing Office is committed to working carefully with the research and commercial institutions that support MIT’s visitors and research affiliates to give them the opportunity to work and learn at MIT.

If your employer has questions regarding the IPIA, its purpose, and its interpretation, they can contact the TLO via tlo-ipia@mit.edu.

It depends on the type of status/appointment change. Certain appointments will require the re-signing of the IPIA, for example:

• Employee to visitor
• Visitor to employee
• Undergraduate to graduate student/employee/visitor

If you have any questions as to whether you need to re-sign your IPIA contact the TLO via tlo-ipia@mit.edu.

You should connect with your TLO officer to discuss the specifics of your circumstance. In some instances, the IP that you generate may need to be jointly assigned to MIT and the other institution, which may affect the assignment commitments MIT has made to its research sponsors. Your TLO officer is the best source for navigating your specific situation.

You should discuss these obligations with the Institute Conflict of Interest Officer and review MIT’s conflict of interest policies concerning outside professional activities. Section 4.5 of Policies and Procedures: and Office of Vice President for Research Financial Conflicts of Interest in Research. It is your responsibility to ensure that the terms of your consulting agreement do not conflict with your commitments to MIT, including your IP assignment obligations to MIT. You may consider appending the consulting rider to any agreement you sign with a for-profit company. You can find a more detailed explanation of the rider and its provisions at the OGC website.

TLO does not help with outside licensing, however, the following MIT resource may be helpful:

• Incoming data use requests are managed by OSATT Core and should be directed to the NDA/DUA portal, renamed Hermes Portal. Access this via hermes.mit.edu. 
• Incoming Material transfer agreements are managed by OSATT Core. The TLO assists with Tangible Property Licensing formerly known as outgoing material transfer agreements.
• Other incoming IP license requests for research purposes that are fee-free (e.g., software licenses) should be directed to the Office of General Counsel at mitogc@mit.edu.
• Incoming software licenses that require payment should be directed to the contracts group in the Office of the Vice President of Finance

A research use license permits the licensee to use the relevant IP only for research purposes; in other words, a licensee may not practice the IP in a way that results in a product or service that is sold commercially or sell a product or service that is covered by the IP (in the case of patent rights). By contrast, a commercial license permits, and oftentimes requires, that the relevant IP be practiced in a way that leads to products and/or services that are sold commercially.  

There are other types of licenses that permit commercial use, such as when software is released under an Open Source Institute approved open source license (such as the “MIT open source license” or the “BSD open source license”) the licensee/user of the software is permitted to use the software for commercial purposes, including by incorporating the software into a product or service that is sold commercially, and the licensee/user does not need to compensate the owner or author of such software. If the intent is to release software in an open access manner without granting commercial rights to licensees/end users, the TLO suggests using a non-commercial, research use only license, rather than an open source license.   

“Copyright © [Year] MASSACHUSETTS INSTITUTE OF TECHNOLOGY. All rights reserved.” The date in the notice should be the year in which the copyrightable work is first published.

Please contact tlo-trademarks@mit.edu.

Review the Office of General Council's article on trademark issues and consider speaking with the TLO at tlo-trademarks@mit.edu and/or the OGC.

TLO Financial Manager
Massachusetts Institute of Technology
Technology Licensing Office
255 Main Street NE18-501
Cambridge, MA 02142-1493

Email: tlo-fina@mit.edu

04-2103594

Please email our office at tlo-fina@mit.edu if you need a copy of our taxpayer ID form (Form W-9), or our sales tax-exempt purchaser certificate (Form ST-5).

TLO is able to accept the following forms of payment from those wishing to license MIT Technology:

• Credit card: with a payment limit of $15,000
• Wire and ACH transfers: sent in US dollars, with a confirmation email sent to tlo-invoice@mit.edu
• Check: made out to "MIT Technology Licensing Office"

Yes. Royalty reports are due regardless of whether there have been commercial sales. Zero-dollar royalty reports are easiest sent via email to tlo-royaltyreport@mit.edu.