Policy No. K.1.1
Initiated by:Director of Research Administration
Approved by:MBL Director/CEO
Date:1 March 1997, reviewed and updated February 4, 2005
Revision:Replaces MBL Patent Policy of 28 November 1987
Distribution:All Employees and Non-Employee Appointed Scientists
The Marine Biological Laboratory wishes to foster new knowledge and secure the benefits of that knowledge for society and for the long-term health of the Laboratory. This policy defines the procedures to be used by MBL investigators to assure the maximum benefit to the public of discoveries made at the MBL, and to safeguard the intellectual property of the MBL, its scientists and staff.
2.0Patentable Inventions and Other Intellectual Property:
Patentable inventions or other discoveries requiring intellectual property protection often arise from work undertaken by investigators and other persons associated with the MBL.
2.1Persons associated with the MBL shall have the right to decide when, and under what conditions, they shall offer the results of their research to journals and other entities whose primary function is to publish information. Notwithstanding this principle, acceptance of research support may engender obligations that must be considered when publication of research results is contemplated.
2.2A person associated with the MBL may seek commercial development of an invention or discovery that is conceived, discovered, or reduced to practice while that person is associated with the MBL, may have no interest in commercial development, or may be subject to obligations arising from a sponsorship agreement (e.g., Bayh-Dole requirements of Federal Grants; contract requirements of industry-sponsored research). In any event, if an invention is conceived or brought to practice by an MBL Principal Investigator, an MBL employee, or by anyone working under an MBL-administered sponsored research agreement, that person must disclose the invention or discovery to the MBL as prescribed by this policy.
As an educational institution, the MBL’s basic objectives in responding to and dealing with such inventions and discoveries are to:
3.1Promote their disclosure, dissemination, and utilization for the greatest possible public benefit;
3.2Protect the rights to patents and other intellectual property which the inventors and the MBL may have;
3.3Provide positive incentives for people associated with the MBL to develop and bring forth inventions, through an equitable allocation of rewards and responsibilities among such inventors, the MBL, and any other organizations that may have sponsored or financed such activities.
4.1″Invention” shall include any invention, discovery, or other work product that manifests an idea that may be copyrightable, patentable or otherwise commercially valuable, and that is conceived, discovered, or reduced to practice by an Inventor who is associated with the MBL. The term “Invention” will normally include computer software and visual images that are obtained as part of MBL research activities, but shall not normally include manuscript text and other written works solely because they may be copyrighted or copyrightable.
4.2″Inventor” shall include any person who makes a significant contribution to the conception, discovery or reduction to practice of an invention and who is associated with the MBL, e.g., faculty, staff, and students (including all types of postgraduate residents or fellows, research assistants, graduate research assistants, teaching assistants and trainees) doing work that is supported in whole or in part by funds, space, personnel or facilities provided or administered by the MBL. For the purposes of this policy, the term “Inventor” shall also describe the author of a novel software program or algorithm conceived, discovered, or reduced to practice at or for the MBL.
4.3″Commercial development” shall include any efforts that are likely to result in financial benefit from an invention, excluding compensation relating solely to publication by a journal or other entity whose primary function is to publish information.
4.4The words “he, his, or him” shall be deemed to read “she, hers or her” where applicable.
5.0MBL Ownership Rights:
5.1Any invention which is conceived, discovered, or reduced to practice by the Inventor during his term of association with the MBL or within six (6) months after said association ends shall be presumed to have been conceived as a result of the Inventor’s use of MBL facilities, funds, or other support. In the absence of sufficient evidence to the contrary, any such invention shall be the property of the MBL.
5.2The use solely of office space or library facilities that are ordinarily available to the Inventor shall be regarded as de minimis support by the MBL, and shall not entitle the MBL to ownership rights in an invention.
6.0Authority of the Director/CEO:
The MBL Director/CEO has the authority to make all necessary decisions relating to patents, copyrights and trade secrets, including the preparation and filing of domestic and foreign patent applications, copyright registrations, licensing agreements, and all legal, academic or other matters related thereto. The Director/CEO may vest authority to act on his/her behalf in a designee or designees.
7.1If any Inventor should seek commercial development of any invention, or if he is subject to a disclosure obligation arising from a sponsorship agreement, he must fully and promptly disclose the invention to the MBL’s Office of Research Administration (ORA). ORA shall maintain a file of such disclosures and a record of resulting actions under this policy.
7.2If an invention is co-invented, each inventor associated with the MBL has a duty to disclose the invention to ORA. All inventors may discharge this obligation by means of a single disclosure.
7.3Each recipient of funds under a governmental or industrial sponsorship agreement is responsible for understanding and complying with his obligations under that agreement. Most such agreements require that all inventions arising from sponsored research be reported to the sponsor. For example, the following language from 35 USC §202(c) applies to all federal funding agreements:
“(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
(1) That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.
(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times… “
7.4Inventors are urged to disclose any inventions to the MBL before they release information regarding the invention to people who are not co-inventors. Patent rights can be destroyed if an invention is published or disclosed to outsiders before a patent application is filed unless the disclosure is protected by a written confidentiality agreement or by a relationship that clearly implies confidentiality.
7.5If an unpublished idea is being discussed with a commercial enterprise, an exchange of confidential information shall be covered by a confidentiality agreement. Forms for such agreements are available from the ORA. If a confidentiality agreement is received from an outside company by a person associated with the MBL, that person should forward a copy of the proposed agreement to ORA before signing it. The MBL may be an involved party and the Director of Research Administration normally should sign any such agreement on behalf of the MBL.
7.6If a patentable idea is discussed in a thesis or other written document, the document should be brought to the attention of ORA. If necessary, ORA may postpone the indexing of the report until a patent application is filed on the invention.
8.0Requests for Waiver:
If the Inventor believes that an invention was conceived and reduced to practice without support from the MBL, he may accompany a disclosure with a request that the MBL waive any rights it may have to such invention. Any such request must be accompanied by a statement of facts that relate to the request.
9.1The Director/CEO shall evaluate all disclosures and requests for waiver with good faith and reasonable diligence. If it appears that a request for waiver should be granted, or if the Director/CEO decides for any other reason not to prepare a patent application on the invention or discovery, then at the request of the Inventor, the Director/CEO may issue a written waiver or decision not to patent, disclaiming any rights the MBL may have to the invention. Any such waiver or decision not to patent shall permit the MBL to make and use the invention for non-commercial purposes.
9.2If the Director/CEO fails to make a determination regarding a waiver or a decision to patent within a period of sixty (60) calendar days from the date of disclosure, then the inventor may so notify the Director/CEO in writing. Within thirty (30) calendar days after the Director/CEO is notified, a decision must be rendered in writing by the Director/CEO or all of the MBL’s rights shall be forfeited and reassigned to the inventor, subject only to such external-sponsor restrictions as may apply.
9.3The MBL may engage a patent management firm to assist in the evaluation, filing and marketing of any and all inventions.
10.0Rights and Obligations of Inventors
The Director/CEO is obliged to solicit and consider the opinions and suggestions of the Inventor while evaluating a disclosure, preparing a patent application, licensing an invention, or making other recommendations regarding an invention. The Inventor is obliged to bring to the attention of the Director/CEO all relevant facts and developments regarding an invention, and to cooperate with and assist the MBL in all matters relating to an invention. The Inventor shall assign to the MBL all domestic and foreign rights to any invention when requested to do so by the MBL, on the forms provided for such purpose by the MBL. An Inventor’s rights and obligations with respect to an invention shall survive so long as the MBL owns any property rights relating to the invention.
11.0Income from Inventions
11.1.The MBL shall reimburse itself from the gross income from an invention for all out-of-pocket and contractual expenses related to the invention. If a patent management firm is engaged to evaluate, file or market an invention, all expenses and fees of said firm will be deducted prior to distribution of income to the MBL and inventors. Remaining and subsequent income shall be distributed as follows:
11.1.1the Inventor(s) shall receive 40%;
11.1.2the Laboratory of the Inventor(s) shall receive 20% as long as the Inventor(s) remain at the MBL. These funds are in addition to the regular funds available to the Laboratory and shall be used for direct support to the Inventor for his or her research or salary. If the Inventor(s) leave the MBL, these funds will be allocated to the Director as below;
11.1.3the MBL shall allocate 20% to a fund under the direction of the Director for the promotion of research; and
11.1.4the MBL shall retain 20% for use at its discretion.
11.2Distributions shall be paid not more than quarterly, or on an appropriate schedule set by applicable licensing agreements for the subject invention. Each payment shall be accompanied by a statement that details royalty income and all attributable MBL expenses relating to the invention. Such a financial statement shall be provided to all inventors who participate in the royalty distribution, at least once per year, even if no payment is due within that year.
11.3The Director/CEO may determine that the equities of a situation suggest that the Inventor(s) should receive a share of the income greater than the amount to which the Inventor(s) would be entitled as set forth above. In reaching such a determination, the Director/CEO should consider such factors as the time and effort put forth by the Inventor(s), the amount of MBL resources involved, the potential for revenue, actual revenue received, assistance of the Inventor in obtaining a license agreement, etc.
11.4If the provisions of this article are inconsistent with the requirements of a sponsorship agreement, then the sponsorship agreement shall prevail.
12.1Inventors shall share per capita in the income to which they are collectively entitled, unless they file with ORA a written, signed, agreement calling for a different allocation in a format that is acceptable to the MBL. Such an agreement may allow for income-sharing with people who are not co-inventors as defined by the patent law.
12.2If the Inventors cannot reach agreement as to the proper division of income, then upon written request by any Inventor, the matter shall be referred to the Director for settlement. If necessary, the Director/CEO may seek the advice of the Board of Trustees in reaching settlement terms.
13.1Any amendment to this policy shall apply to all decisions that are made after the effective date of said amendment. However, no amendment shall decrease the royalties received by the inventors under any assignment or license agreement that is signed before the date of said amendment.
13.2The MBL Director/CEO should, no less frequently than every five years from the date of enactment, review, revise and update the patent policy as appropriate.
14.0Policy Clarification and Updates:
Policy clarification and updates are available from the Office of Research Administration.