Policy No. K.1.1
Initiated by:Director of Research Administration
Approved by:MBL President/Director
Date: March 1, 1997, reviewed and updated February 4, 2005 and December 30, 2014
Revision:Replaces MBL Patent Policy of November 28, 1987
Distribution:All Employees and Non-Employee Appointed Scientists
1.0 Policy Statement
The Marine Biological Laboratory (MBL) wishes to foster new knowledge and secure the benefits of that knowledge for society and for the long-term health of MBL. 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.
2.0 Patentable Inventions and Other Intellectual Property
Patentable Inventions (as defined below) or other discoveries requiring intellectual property protection often arise from work undertaken by investigators and other persons associated with the MBL.
Persons 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.
A 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).
If an Invention or discovery is conceived or reduced to practice by an MBL principal investigator, an MBL employee, or 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 and MBL owns such Invention or discovery in accordance with Section 5.
As an institution dedicated to research and education, the MBL’s basic objectives in responding to and dealing with Inventions and discoveries are to:
Promote their disclosure, dissemination, and utilization for the greatest possible public benefit;
Protect the rights to patents and other intellectual property which the Inventors (as defined below) and the MBL may have;
Provide 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.
″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, reduced to practice, or authored 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.
″Inventor” shall include any person who makes a significant contribution to the conception, discovery, reduction to practice, or authorship 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.
″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.
The words “he, his, or him” shall be deemed to read “she, hers or her” where applicable.
5.0 MBL Ownership Rights
Any 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 is the property of the MBL.
The 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.
6.0 Authority of the MBL Director
The MBL Director 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 MBL Director may vest authority to act on his behalf in a designee or designees.
If any Invention may have commercial potential, or if any Inventor should seek commercial development of any Invention, or if he or she is subject to a disclosure obligation arising from a sponsorship agreement, he or she must fully and promptly disclose the Invention to the MBL Director or his designee in accordance with any instructions of the MBL Director or such designee.
If an Invention is co-invented, each Inventor associated with the MBL has a duty to disclose the Invention as described above. All Inventors may discharge this obligation by means of a single disclosure.
Each recipient of funds under a governmental or industrial sponsorship agreement is responsible for understanding and complying with his or her 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… “
Inventors are urged to disclose any Inventions before they release information regarding the Invention to people who are not co-Inventors. Patent rights can be destroyed if an Invention is published, presented or otherwise 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.
If an unpublished idea is being discussed with a commercial enterprise, an exchange of confidential information may be covered by a confidentiality agreement. Forms for such agreements are available from the Office of Sponsored Programs (OSP). 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 OSP before signing it. The MBL may be an involved party and the Deputy Director of Research & Programs normally should sign any such agreement on behalf of the MBL.
If an Invention is discussed in a thesis or other written document, the document should be brought to the attention of the MBL Director or his designee according to Section 7.0 above. If necessary, OSP may postpone the indexing of the report until a patent application is filed on the Invention.
8.0 Requests 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.
The MBL Director 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, then the MBL Director shall issue a written waiver disclaiming any rights the MBL may have to the Invention. Any such waiver shall permit the MBL to make and use the Invention for non-commercial purposes. The MBL Director shall attempt to make a determination regarding a waiver within a period of sixty (60) calendar days from the date of disclosure.
9.0 Decision Not to Patent and Re-Assignment of Rights
If the MBL Director or his designee decides for any reason not to prepare a patent application on the Invention, then at the request of the Inventor and at the discretion of the MBL, the MBL may assign rights in the Invention back to the Inventor(s). Any such decision not to patent shall permit the MBL to make and use the Invention for non-commercial purposes. The terms of any such written assignment will govern the rights and obligations of the Inventor and the MBL.
10.0 Rights and Obligations of Inventors
The MBL Director, or his designee, 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 MBL Director, or his designee, all relevant facts and developments regarding an Invention, and to cooperate with and assist the MBL in all matters relating to an Invention, including, without limitation, signing any agreements and providing any documentation reasonably necessary to evidence the MBL’s ownership of the Invention. 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 even if the Inventor is no longer affiliated with the MBL.
11.0 Income from Inventions
Revenue arising from Inventions shall be distributed as follows except that the MBL or its designee may retain reimbursement for direct costs incurred in evaluating, protecting, and marketing Inventions:
55% to the MBL’s designee for Invention management services;
25% to the Inventor(s);
10% to the Inventor(s)’ lab(s) as long as the Inventor(s) remain at the MBL. These funds are in addition to the regular funds available to the MBL 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 a fund under the direction of the MBL Director for the promotion of research; and
10% to the MBL.
Distributions 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 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.
If the provisions of this article are inconsistent with the requirements of a sponsorship agreement, then the sponsorship agreement shall control.
12.0 Multiple Inventors
Inventors shall share per capita in the income to which they are collectively entitled, unless they file with OSP 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. If the MBL receives a single payment in consideration for rights to multiple Inventions, amounts paid to the Inventors shall be split first equally among Inventions and then equally among Inventors.
If 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 MBL Director for settlement. If necessary, the MBL Director may seek the advice of the Board of Trustees in reaching settlement terms.
Any amendment to this policy shall apply to all decisions that are made after the effective date of such 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 such amendment.
The MBL Director should, no less frequently than every five years from the date of enactment, review, revise and update the patent policy as appropriate.
Policy clarification and updates are available from the Office of Sponsored Programs.