MIT cannot transfer the ownership of its intellectual property to others. Policy, tax regulations, the pervasiveness of government funding in our laboratories, export control laws, and the resultant regulations that affect the majority of our patents prevent the Institute from doing so.
A summary of licensing arrangements for each type of intellectual property is presented below.
MIT offers a full range of license options for sponsors to practice patentable inventions that are generated during a sponsored research project, both for commercial and research use.
Commercial license options include exclusive royalty-bearing licenses and non-exclusive royalty-free licenses.
Patent Licensing Options for MIT’s Sole Inventions
MIT aims to have its research yield public benefit through commercialization in a reasonably short time. Sponsors usually share this goal and are the best parties to achieve it.
MIT offers sponsors a variety of license options for patented inventions that are created solely by MIT inventors:
Commercial, Exclusive, Royalty-Bearing, Sublicensable License
A sponsor may elect an option for an exclusive commercial license to practice a patented invention in those geographic regions where it asks MIT to file, and in the fields of use appropriate for the sponsor’s capabilities and commitment to exploit the invention.
The royalty supports further research at MIT, and provides an incentive for researchers to disclose inventions that result from the research. MIT has a long history of successfully negotiating commercially reasonable licenses and royalties with sponsors.
U.S. tax regulations require that license royalties on university-owned patents granted to sponsors must be at fair market value determined at the time the patent becomes available. This precludes MIT from specifying license or royalty terms in a research agreement.
Commercial, Non-Exclusive, Royalty-Free, Non-Sublicensable License
In many cases, the sponsor’s business plan does not require an exclusive license for commercialization of inventions arising from the research. In those instances, no royalties are required.
Internal License for Use in the Sponsor’s Continued Research
To enable sponsors to continue internal research and development in the sponsored research area, MIT automatically grants sponsors a non-exclusive, non-transferable, royalty-free license for internal research purposes.
For both non-exclusive and exclusive commercial licenses, MIT asks the sponsor to reimburse MIT for patent costs. Such reimbursement is not required for the internal research use license.
Patentable inventions jointly created by MIT and a sponsor inventor are jointly owned by MIT and the sponsor. Each party may license others without accounting to the other party. If the sponsor desires an exclusive position in a joint invention, then MIT offers an option to an exclusive, commercial, royalty-bearing license to MIT’s rights in the invention.
For computer software and its documentation and/or databases that are specified to be delivered as part of the project, the sponsor receives an option to elect a royalty-free, non-exclusive, non-transferable license to use, reproduce, make derivative works based upon, display, and distribute to end users, such computer software and its documentation and/or databasesfor internal and/or commercial purposes.
For other copyrighted material that is specified to be delivered under the research agreement, the sponsor is automatically granted a royalty-free, non-exclusive, irrevocable, non-transferable, license to use, reproduce, make derivative works, display, distribute and perform such materials for the Sponsor’s internal purposes.
Copyright licenses do not extend to copyrightable materials that are not research deliverables, such as student theses or researcher publications in journals.