1. What is an invention? How can I tell if an invention may be patentable?
2. What is copyright and why should I care about it?
3. What is the process for licensing inventions and copyrightable works at MGH?
4. If I think I have made an invention or copyrightable work, how do I proceed?
5. Who owns inventions that I make? What about software and other copyrightable material?
6. What about journal articles and other publications?
7. Suppose I want to consult for a company? Can the company own my inventions?
8. Will I or my lab receive any income from intellectual property I create?
9. I have a part-time appointment at the MGH. Does the Intellectual Property Policy apply to me?
   

What is an invention? How can I tell if an invention may be patentable?

For purposes of the policy, an "invention" is any discovery or invention, whether patentable or not. Examples of inventions include new and improved devices and compounds; novel biological materials such as proteins, genes, cell lines and transgenic animals; diagnostic tests; new uses of known articles or substances; algorithms; software; and any other tangible research property. An invention may be patentable if it is "useful," "new" (that is, it has not been previously used or known to the public), and "non-obvious" to a person of average skill in the field of the invention.

An inventor's own publications can weaken or (in some cases) destroy the novelty of an invention, so it is important to disclose potential inventions to Corporate Sponsored Research and Licensing before the work is published or used in the clinic. Corporate Sponsored Research and Licensing, in conjunction with outside counsel, is responsible for evaluating the patentability of inventions. Corporate Sponsored Research and Licensing staff will be glad to discuss a particular invention with you.

What is copyright and why should I care about it?

Copyright protects "original works of authorship," such as manuscripts, books, slides, videotapes or disks, and many aspects of computer software. People other than the author may use the ideas contained in copyrighted works, but they may not copy the way the ideas are expressed. Most academicians encounter copyright issues only when they sign their publisher's contract for a journal article or textbook, which is not ordinarily subject to the Intellectual Property Policy (see question 6 below).

But other written materials, along with software and video products, are increasingly being developed with hospital involvement and are therefore included in the policy. If you develop software, videos, patient handbooks, or other copyrightable works in connection with MGH activities, it is best to be aware of copyright concerns before your project begins, to be sure that the work can be used as intended when it is finished.

This is particularly important if consultants or others outside the MGH are involved, if the work is based on pre-existing material, or if you plan to distribute it outside the MGH. Copyright projects often present legal issues unfamiliar to most scientists; Corporate Sponsored Research and Licensing or the Office of General Counsel will be glad to provide advice. See policy sections 7.0, 8.1(a), 8.3, 9.0, 10.0, 13.0.

What is the process for licensing inventions and copyrightable works at MGH?

The licensing process begins with disclosure of your invention or work to Corporate Sponsored Research and Licensing. Corporate Sponsored Research and Licensing will determine whether MGH owns the invention or work and, in appropriate cases, evaluate its patentability, explore commercial prospects, and take steps to protect and license it.

See sections 6.3-.6, 11.3-.7. Unless otherwise agreed, MGH is responsible for all expenses of patenting and licensing its technology when it elects to take those actions. License income is distributed as explained under question 8 below.

If I think I have made an invention or copyrightable work, how do I proceed?

Inventions should be disclosed to Corporate Sponsored Research and Licensing if you believe they may be patentable or have substantial commercial value, if you would like to have them commercialized, or if you are working under a sponsored research arrangement that requires their disclosure. In most cases, copyrightable works should be disclosed under the same circumstances. If you have created an invention or software that you believe is not owned by the MGH, disclosure is required only if you intend to commercialize the property or otherwise use it for private gain. This is to give MGH the chance to determine ownership before the property is used commercially.

Who owns inventions that I make? What about software and other copyrightable material?

Any invention made in activities that received direct or indirect financial support from, or made substantial use of any resources of, an MGH affiliated institution is owned by the MGH. With the exception of academic publications (see 6 below), the same is true for copyrightable works. See sections 5.3, 8.3. In addition, MGH owns inventions and software, but not other copyrightable works, that arise out of or relate to the inventor's MGH activities, even if they technically appear to have been made without using MGH funds or resources.

This is because even inventions conceived "in the shower," for example, if related to the inventor's profession, are likely to be based upon work supported by the institution and its sponsors, including the U.S. government. See sections 5.0, 5.3(b), 8.0, 8.3(b). Individuals own other inventions and copyrightable works they create, unless a grant provides otherwise.

What about journal articles and other publications?

Academic publications of Professional Staff and students generally belong to their authors, in full accord with tradition. Because of patent concerns, authors are encouraged to notify Corporate Sponsored Research and Licensing as early as possible before publishing or publicly presenting material describing an invention, or before publicly demonstrating one. See question 1 above.

Suppose I want to consult for a company? Can the company own my inventions?

Companies often expect to own inventions made in the scope of a consultancy; however, most consulting is done in a field related to the individual's work at MGH, so that any inventions would ordinarily be owned by MGH. For individuals who wish to consult, the policy provides a way to obtain an exemption from institutional ownership -- in advance -- under appropriate circumstances, if inventions are expected to relate to the inventor's work at the hospital but will be created off-site and at the expense of the consulting company.

Similarly, if investigators wish to form their own company around some of their work, institutional ownership of future inventions in that area of work may be relinquished in appropriate cases with advance approval. Individuals who want the MGH to relinquish its rights in these circumstances should make a request to Corporate Sponsored Research and Licensing.

In some cases Corporate Sponsored Research and Licensing may seek review by the MGH committee responsible for implementing the policy. In all cases, investigators must be able to keep the exempted body of work separate from their MGH activities and to comply with other MGH policies on consulting and conflicts of interest.

Will I or my lab receive any income from intellectual property I create?

In general, the net proceeds from licensing MGH-owned patents, copyrights and biological materials are shared with the inventor or other creator, the creator's laboratory/unit and department/service, and the institution's general research fund. Costs of patenting, licensing, litigation, and the like are deducted first. Income may be treated differently if it is received in the form of equity or if a grant dictates otherwise.

The "creator's" share is generally distributed either to the inventors under U.S. patent law or, in the case of royalties on unpatented property, to the individuals who made substantial inventive or innovative contributions to the property. Income from copyrightable works that are "made for hire," such as computer programs written by employees hired to be programmers, is retained by the MGH. Laboratories may adopt their own policies for reallocating the creator's share -- for example, devoting it to lab purposes or sharing it with all lab members, if the property to be created will be a team effort -- in accordance with institutional guidelines.

I have a part-time appointment at the MGH. Does the Intellectual Property Policy apply to me?

The policy applies to all MGH Professional Staff (including visitors), students, employees, fellows and affiliates of Harvard, MIT or other academic institutions who participate in MGH activities, whether their participation is part-time or full-time. See Glossary ("Member").

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