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Institute to release new patent policy

By Reuven M. Lerner

The MIT Technology Licensing Office will release its new "Guide to the Ownership, Distribution, and Commercial Development of MIT Technology" within two weeks, according to Vice President for Research Kenneth A. Smith '58. Smith said that the report will recommend changes in attitudes toward patent licensing, most of which are "already in effect."

The TLO guide's introduction says that "this policy will define not only the ownership, distribution, and commercialization rights associated with the technology in the form of intellectual property, but will also define policies and procedure which govern use and distribution of the technology in its tangible form."

The report also states that whereas "free exchange of information among scholars" is an "essential" part of MIT, patent licensing is "subordinate to education and research."

Smith said the report "reflects

what we've learned in the last three years." He believed that by focusing on the public dissemination of new technology, rather than only on income, MIT will help the public, new companies, and itself at the same time. As an example, he said that 92 companies licensed patents from MIT in 1988, up from 17 in 1985. He explained that technology will reach the public faster by letting more companies license patents, and that while MIT might profit from licensing agreements, money is not its prime concern. He added that the TLO staff has completely changed over the last three years to reflect this attitude change.

Lita Nelsen, associate director of the Technology Licensing Office, said that MIT made $3 million in cash and equity last year from patent licensing. She explained that when a company cannot pay patent royalties, MIT sometimes accepts stock instead. According to Nelsen, only 10 percent of last year's profits came

from such equity.

Nelsen said that 280 disclosures, or patent application proposals, were submitted to the TLO last year. Of those, she continued, 120 were filed with the United States Patent Office. She added that MIT spends between one and five years negotiating with the Patent Office about each patent, meaning that the number

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of patents granted can vary greatly from year to year. As an example, she said that MIT received 66 patents last year, as opposed to 88 two years ago.

She added that most departments submitted disclosures last year, including the Departments of Biology, Chemical Engineering, Chemistry, and Mechanical Engineering, as well as Lincoln Labs, which uses the TLO for patent filing.

Inventors, as well as MIT, can profit from the royalties on patent licenses, according to Nelsen. She said licensees pay between 5-

10 percent royalties to the TLO, which gives one-third of its money to the inventor.

Nelsen said that the overwhelming majority of disclosures come from graduate students and professors, and that the TLO would like more undergraduates to become involved. She also said that the TLO can help students decide whether or not a patent is possible or necessary.

Smith said that the report will be distributed to professors soon after its release, and that additional copies will be available at the TLO.