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Intellectual Property Policy and Manual

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Policy Information
  • Issue Date: January 2, 1994
  • Revision Date: January 1, 2015
  • Primary Contact: Director of Technology Transfer
  • Senior Administration: President and Director
  • Responsible Office: The Office of Technology Transfer and the Media Relations Office
Policy Statement

The Woods Hole Oceanographic Institution (WHOI or "the Institution") is committed to sound management of the intellectual property resulting from WHOI research and has established the policies described in this manual to facilitate that management. Matters of ownership, distribution, and commercial development are addressed in this manual as well as procedures for transferring technology and images into the market for societal benefit and economic gain. These policies and procedures are binding on all WHOI Affiliates, as defined below. Ownership and other rights can be determined more easily when WHOI resources are used solely for the Institution's purposes. Accordingly, the Institution's resources should not be used for personal projects, personal gain, or personal commercial advantage. WHOI Affiliates may not enter into private arrangements with non-WHOI affiliated third parties or commercial entities or freely give them intellectual property resulting from the Institution's research efforts.

It is the policy of WHOI that individuals through their employment by WHOI or by participating in a sponsored research project, or using WHOI-administered funds or facilities, thereby accept the principles of ownership of intellectual property as stated under this policy.  In furthering such undertaking, all participants will sign Inventions and Proprietary Information Agreements.

WHOI Affiliates should direct their questions about this policy or its implementation to the Office for Technology Transfer or the Public Information Office.

Reason for Policy

Sound intellectual property management plays a positive role in increasing funding, attracting and retaining the best researchers, enhancing the reputation of the Institution, and reducing WHOI's liability. Furthermore, as a 501 c (3) not-for-profit institution and recipient of Massachusetts Educational Finance Authority Bond funding, WHOI must avoid the private corporate use of its properties and research funds.

The prompt and open dissemination of the results of WHOI research and the free exchange of information for scholarly or research purposes are essential to the fulfillment of WHOI's commitment to excellence in research and education and, therefore, research priorities will have precedence over technology development priorities.

Technology transfer and copyright issues will be subordinate to the dissemination of information and will not cause unreasonable delay beyond the standard periods necessary to define and protect the rights of the Institution and its affiliates. Thus, all grants and contract terms are expected to further the utilization (e.g. through commercialization, patenting or publication) by the public of the results of research at WHOI.

In unclear situations or where there appears to be a conflict between the priorities, the Executive Vice President & Director of Research will be the final arbiter.



Contents
Policy Information
Policy Statement
Reason for Policy
Who Should Be Familiar With This Policy
Contacts
I. DEFINITIONS
II. INTELLECTUAL PROPERTY-RELATED RESPONSIBILITIES
III. POLICY
IV. POLICY DETAILS BY INTELLECTUAL PROPERTY TYPE
V. FORMS
VI. RELATED FEDERAL ACTS AND LAWS AND WHOI POLICIES
VII. WHOI PHOTO/ART CREDIT FORMATTING


Who Should Be Familiar With This Policy
All WHOI Affiliates especially:
  • Members of the scientific and technical staff, including principal investigators
  • Department Administrators
  • Department support staff
  • Grant and Contract Services personnel
  • MBLWHOI Library personnel
  • Academic Programs Office personnel
  • Communications and Media Relations personnel
  • Visiting researchers
  • Students
  • Fellows
  • Interns
  • Guest investigators


Contacts

When you have questions about specific issues or need assistance with the interpretation of this policy, contact:

Director of the Office of Technology Transfer Ext. 3556
Director of Communications Ext. 2720
Director of Grant and Contract Services                 Ext. 3542
Director of Human Resources Ext. 3562
Security Office Control Officer Ext. 2723


I. DEFINITIONS

These definitions apply to these terms as they are used in this policy:

Assign

Assign means to transfer property, including Intellectual Property, from one person or entity (the Assignor) to another (the Assignee).

Commercialization Cost

Commercialization Cost includes all costs to transform an invention to a licenseable product or commodity.  Cost associated with patent prosecution and protection is not considered to be part of Commercialization Cost.

Copyright

Copyright subsists in original works of authorship that have been fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Copyright covers the artistic expression in the particular literary work, musical work, computer program, video or motion picture or sound recording, photograph, sculpture, and so forth, in which the expression is embodied, illustrated, or explained.

Defamation

Defamation is an abusive attack on a person’s character or good name which can be addressed by state law that protects an individual or entity against harmful false statements. Written defamatory statements are known as libel, and spoken defamatory statements are known as slander. In order to be actionable, either libel or slander must be published, a requirement that may be satisfied by traditional publishing in a newspaper or magazine, or merely spoken to other people.

Fair Use

Fair use is statutorily defined by the Copyright Act as a defense that allows an otherwise infringing use of a copyrighted work for "purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research."

Gross Royalty Income

Gross Royalty Income is income received by WHOI from a licensee and is typically based on a percentage of licensee net sales and as specified within the license. 

Institution

Institution is the Woods Hole Oceanographic Institution or “WHOI”.

Intellectual Property

Intellectual Property is a product of human intellect that has commercial value and receives legal protection, and is broadly defined to include technical innovations, inventions, trade secrets, tade names, customer lists, copyrights, patents, know-how, and discoveries, as well as writing and other information in various forms, including computer software (source code or object code), multimedia, sound recordings, audiovisual, illustrations, and still and moving images.

Invention

An invention is any idea, discovery, or knowhow and any associated or supporting technology that is required for development or application of the idea, discovery, or knowhow.

Inventor

An inventor is a person covered by this policy who individually or jointly with others creates an invention and who meets the criteria for inventorship under United States patent laws and regulations.

License

A license is a written contract granting permission to use Intellectual Property.  A license is typically executed to convey rights to a party (the licensee) who intends to commercialize the technology defined in the contract. The granting party (the licensor) may receive, in exchange, an upfront payment, milestone payments, royalty payments, and/or other considerations. The license may be exclusive, within one or more fields of use, in which case rights are conveyed to a single licensee within a field, or non-exclusive, in which case rights can be conveyed to multiple licensees within a single field.

License Cost

License Cost is the administrative cost incurred by the Institution to produce, negotiate and execute a License

License Fee

License Fee is a monetary amount specified in the license to be paid to the Institution by the licensee and may cover Institution License Costs and/or other expenses or considerations which may or may not be specified within the License.  Timing and amounts of license fee payments are determined by negotiation

March-In-Rights

If an academic institution has elected to hold the rights to an invention made with Federal funding, the funding agency can, through the exercise of its march-in-rights, require the institution to grant a license to a responsible applicant (commercial entity) if the agency believes the academic organization has not taken steps (or is not expected to take steps) to achieve practical use of the invention.

Mask Works

Mask works are a series of related images representing a predetermined, three-dimensional pattern of a metallic, insulating, or semi-conducting layer of a semiconductor chip product.

Media - Copyrightable

Copyrightable media includes still and moving images, illustrations, and multimedia and audio recordings.  The commercialization and ownership rights of media obtained by WHOI Affiliates during the course of their research or other WHOI-sponsored activities belong to WHOI.

Net Royalty Income

Net Royalty Income is Gross Royalty Income less any applicable License or Commercialization Cost.

Patent (United States)

A patent is a grant issued by the United States Patent and Trademark Office giving an inventor the right to exclude all others from making, using, or selling an invention within the United States, its territories and possessions, for a period beginning on the date an application issues as a patent and typically extending 20 years from the earliest effective filing date of the application for patent.  Patent rights are territorial. Exclusionary rights can be secured in other countries through corresponding patent offices.

Research Records

Research records include, but are not limited to research notes and notebooks, laboratory notes and notebooks, computer disks and printouts, correspondence and memoranda, and data.  Maintaining research records can be essential in protecting Intellectual Property rights, answering questions regarding management of research programs, and addressing possible questions concerning the conduct of the research.

Right of Publicity

Right of Publicity is a state law right permitting an individual exclusive control over the commercial exploitation of his or her name, likeness, and biographical details.

Shop Rights

Shop rights automatically give an employer a non-exclusive, royalty-free, and non-transferable license to use a patented invention in the employer's business. Shop Rights are invoked where there is no obligation for an inventor to assign rights in an invention to an inventor's employer where the invention was made using the employer's resources.

Significant Use

When an invention, software, or other copyrightable material, mask work, or Tangible Research Property is developed by WHOI Affiliates using significant WHOI funds or facilities, WHOI will own the resulting patent, copyright, or other Tangible Research or Intellectual Property.

Sponsored Research

Sponsored research isresearch conducted by a Principal Investigator or group of PrincipalInvestigators who is/are supported by funds obtained throughthe writing of a proposal and/or the receipt of an award. Mostoften, the award is accompanied by a grant, contract, or other agreementthat obligates WHOI to accomplish the proposed research,following specific guidelines and regulations. These regulationsmay vary from one funding source to another and should be clearlydefined in a legal document.

Tangible Research Property

Tangible Research Property (TRP) is defined as those research results that are in a tangible form as distinct from intangible (or intellectual) property. Examples of TRP include integrated circuit chips, computer software, biological organisms, biological reagents, engineering prototypes, engineering drawings, still and moving images, and other property that can be physically distributed.

Trade and Service Marks

A trade or service mark is a word; name, symbol, or device (or any combination) adopted by an organization to identify the source of its goods or services and distinguish them from the goods and services of others. These marks are symbols of quality and indicate to consumers from whom the goods or services can be procured. In the United States, trade or service mark ownership is not dependent upon federal or state registration, but upon use of the mark.

Trade Secret

Generally, a trade secret is a secret used in business that gives the owner of the trade secret a competitive edge over others. It is used to protect valuable proprietary information and is a commonly used form of protection for software. Unlike copyrights and patents, there is no federal trade secret statute. Trade secret laws are determined by the individual states but generally adhere to similar principles.

WHOI Affiliates

All persons associated with WHOI including employees, students, adjunct professors and other adjunct investigators, postdoctoral scholars and fellows, summer student fellows, guest investigators and students, Trustees, Corporation members, participants in a sponsored research project, and those who are using WHOI administered funds or facilities are WHOI Affiliates. All WHOI Affiliates must accept the principles of ownership of Intellectual Property stated in this document.

WHOI Intellectual Property

WHOI Intellectual Property includes the value encapsulated in a specific knowledge, process, technology, or innovation that conveys ownership rights and benefits to WHOI and WHOI Affiliates.

Work for Hire

Work for hire is defined by copyright law as a work prepared by an employeewithin the scope of his or her employment.  In addition, under the Copyright Act the copyright of commissioned works of non-employees is owned by WHOI ifthere is an agreement between WHOI and the non-employeestating that the commissioned work is a work for hire and the workis: a contribution to a collective work, part of a motion picture orother audiovisual work, a translation, supplementary work, acompilation, an instructional text, a test, answer material for a test,or an atlas.  Subject to an agreement to the contrary, commissioned works of non-employees that do not fall under the definition of a work for hire are owned by the author and not WHOI.



II. INTELLECTUAL PROPERTY-RELATED RESPONSIBILITIES

Board of Trustees

The overall direction and general administration of this policy is the responsibility of the WHOI Board of Trustees. The Board may appoint a committee of Trustees and Corporation members who have a specific interest and expertise in the development of business activities associated with intellectual property to administer this responsibility.

Grant & Contract Services

Grant & Contract Services provides assistance with financial administration of grants and contracts and assistance in interpreting the legal and fiscal responsibilities of grantees and contractees.

Media Relations - Director of Communications

Reporting to the Director of Communications, the Public Information Office is responsible for licensing of images, audio andother audiovisuals to news and entertainment outlets. The Director of Communications will arbitrate issues concerningcopyright or licensing of media. At his or her discretion, theDirector of Communications may convene an advisory panelconsisting of the Director of the Office for Technology Transfer, the Director of Grant and Contract Services, the Director ofResearch and representatives from the MBL-WHOI Library,members of the scientific departments, and representatives from the Board of Trustees.

Office for Technology Transfer

The Office for Technology Transfer, working under the direction of the Chief Financial Officer, is responsible for the day-to-day administration of this policy. The Office for Technology Transfer evaluates, obtains proprietary protection for, and assists in the distribution of technology for research purposes. The Office for Technology Transfer assists in the commercial development of select inventions and technologies.

The Office for Technology Transfer will pursue the licensing of intellectual property by researching the market for the technology, identifying third parties to commercialize it, entering into discussions with potential licensees, assisting, when appropriate, with the development of a business plan, negotiating and facilitating the execution of appropriate licenses or other agreements, monitoring progress, and distributing royalties to the inventors/authors in accordance with WHOI royalty policy. The Office for Technology Transfer will examine the special rights and obligations that WHOI may have under international law and treaties pursuant to the licensing or assignment of intellectual property rights to a foreign party. In the event of a license or transfer agreement to a foreign entity or person, the Office for Technology Transfer will work with the Security Office to evaluate the export and re-export of technology originating in the United States, including the electronic transmission of information, research results, biological materials, and software to foreign countries and certain foreign nationals. The Office for Technology Transfer will further work with the Security Office to ensure that any such transfer of information does not violate the laws and regulations of the United States, including, but not limited to, the Export Administration Act and Arms Export Control Act.

The Office for Technology Transfer will enter into agreements with outside services organizations, lawyers, and consultants to assist with the commercial evaluation of WHOI intellectual property and the protection thereof as well as assist inventors in the development and protection of intellectual property, the development of business plans, and the pursuit and negotiation of commercial opportunities.  The Office for Technology Transfer will seek to facilitate the interaction between lawyers or consultants and WHOI Affiliates on intellectual property and technology transfer matters. 

Affiliates                                            

WHOI requires all Affiliates to complete a Patent Agreement, as a condition of employment.  By signing this agreement, WHOI employees agree to assign ownership to all inventions they may develop as a WHOI employee to WHOI and that they will abide by this Intellectual Property policy.

All WHOI Affiliates are further required to file the Institution's annual "Report of Individual Outside Professional and Commercial Activities." (See Conflict of Interest and Outside Professional Activities policy.)

Affiliates must also submit completed Invention Disclosure Forms to the Office for Technology Transfer to document potential inventions, creations, copyrightable works, or otherwise useful discoveries, including works that have potential commercial or humanitarian value. Alerting the Office for Technology Transfer is essential, even if the Affiliate doubts the work is patentable, has value, or is WHOI's property. The Affiliate need not understand or assess the patentability, other commercial aspects of a discovery or work, or ownership rights therein. The Affiliate's obligation is only to bring the discovery or work to the attention of WHOI through the Office for Technology Transfer.

Where Affiliates are collaborators, a single Invention Disclosure Form can be submitted by the Principal Investigator or any other Investigator involved with the invention.  With few exceptions, the support and cooperation of the inventor or author is critical to licensing success. Original research records must be retained and/or archived so they can be produced if required to protect intellectual property rights.

Principal Investigators

Principal Investigators are responsible for the development, storage, distribution and use of tangible research property that is developed in the course of research that is subject to the terms of a sponsored research or other agreement. In any other case where significant Institution resources were used, this responsibility is shared with the Department Chair. In any situation where a question arises about the development, storage, distribution, or use of Tangible Research Property, the Office for Technology Transfer or the Public Information Office should be consulted.  Principal Investigators, who wish to embargo the distribution of images or other research media beyond the normal two-year period, must notify Media Relations and the Archives. (See "Distribution of Images and Other Media for Research Purposes", below.)

III. POLICY

DETERMINATION OF OWNERSHIP OF INTELLECTUAL PROPERTY

Rights in inventions, copyrights, trademarks, other Intellectual Property or Tangible Research Property, mask works, and ownership of materials, including software, made or created by WHOI Affiliates are as follows:

Intellectual Property Owned by WHOI

Absent contrary language in a relevant agreement or a contrary prior obligation to assign to another entity, Intellectual Property owned by WHOI includes:

(a) Intellectual Property developed in the course of or pursuant to government or non-government sponsored research or other agreements.

(b) Intellectual Property created as a Work for Hire by operation of the copyright law, or created pursuant to a written agreement with WHOI providing for transfer of copyright or ownership to WHOI.

(c) Intellectual Property developed by WHOI Affiliates in the normal course of their WHOI responsibilities.

(d) Intellectual Property developed with Significant Use of funds or facilities administered by WHOI.

Intellectual Property Owned by Inventors and Authors

Absent contrary language in a relevant agreement or a contrary prior obligation to assign to another entity, Intellectual Property owned by inventors and authors includes:

(a) Intellectual Property developed independently by the inventor or author, outside the inventor's or author's normal WHOI activities on personal unpaid time.

(b) Intellectual Property not developed with Significant Use of funds or facilities administered by WHOI.

(c) Text books not resulting from sponsored research, lectures, books other than textbooks resulting from sponsored research, articles and other scholarly publications, or popular novels, poems, musical compositions, works of fiction or creative writing or other works of artistic imagination that are created by the personal effort of a WHOI Affiliate outside of the Affiliate's assigned area of research, teaching, or employment responsibilities and which do not make Significant Use of WHOI administered resources.

Significant Use of WHOI Administered Resources and Guidance

When an invention, software, or other patentable or copyrightable material, mask work, or other Intellectual Property or Tangible Research Property is developed by WHOI Affiliates while participating in WHOI programs using significant WHOI funds or facilities, WHOI will own the patent, copyright, or other Intellectual Property or Tangible Research Property. If the material is not subject to a sponsored research or other agreement giving a third party rights, the issue of whether or not a significant use was made of WHOI funds or facilities will be reviewed by the inventors' or authors' respective Department Chair, who will forward a written recommendation to the Office for Technology Transfer or the Public Information Office.

Textbooks developed in conjunction with class teaching are excluded from the Significant Use category, unless such textbooks were developed using WHOI-administered funds paid specifically to support textbook development.

Generally, an invention, software, or other patentable or copyrightable material, mask works or other Intellectual Property or Tangible Research Property will not be considered to have been developed using WHOI funds or facilities if all the following criteria are fulfilled:

(a)  a minimal amount of unrestricted funds have been used;

(b) a minimal amount of time has been spent using significant WHOI facilities or only insignificant facilities and equipment have been utilized;

(c) the development has been made on the personal, unpaid time of the inventor, author, or creator; and

(d) the work was made in a field or area of research other than one assigned to the inventor, author or creator pursuant to a WHOI-sponsored project.

WHOI Affiliates should consult with the Office for Technology Transfer or Public Information Office before attempting to commercialize an inventor-owned or author-owned work to ensure that the work complies with all WHOI Intellectual Property policies, as well as local, state, and federal laws and contractual obligations.

Certain Rights to Inventors, Authors or Creators

When an invention, software, or other patentable or copyrightable material, mask works or other  Intellectual Property or Tangible Research Property is not subject to a sponsored research or other agreement (such as an equipment agreement), but has been developed with Significant Use of WHOI funds or facilities, the Office for Technology Transfer or the Communications Department may, at their discretion and consistent with the public interest, license certain rights to the works to inventors, authors, or creators, exclusively or nonexclusively on a royalty basis. The inventors, authors, or creators must demonstrate technical and financial capability to commercialize the Intellectual Property, and the Office for Technology Transfer and the Communications Department will have the right to terminate such license with inventors, authors, or creators if they have not achieved effective dissemination within three years. The license is also subject to the inventors, authors, and creators waiving their rights to royalty sharing under this policy guide. Where such a license is issued, the inventors, authors, and creators may be required to assume the costs of filing, prosecuting and maintaining any patent, copyright or trademark rights or registrations.

Amendment to Publication Agreement

WHOI Affiliates should prepare and submit the "Amendment to Publication Agreement" form and attach it to all contracts concerning publication of research results. This Agreement gives WHOI authors and WHOI non-exclusive rights to use, distribute, and reproduce material in electronic digital or print form in activities connected with the author's academic and professional activities. WHOI Affiliates should consult with the MBL-WHOI Library if they have questions or concerns prior to signing any document or contract concerning copyrights and publication of research results. WHOI Affiliates authoring these publications should be reminded and should convey to the publisher that the copyright to images included within the publication belong to WHOI.

Student Theses

WHOI will own copyright in theses that:

(a) involve research for which the student received financial support in the form of wages, salary, stipend, or grant from funds administered by WHOI; or

(b) involve research performed in whole or in part utilizing equipment or facilities provided to WHOI under conditions that impose copyright restrictions.  For theses completed in the MIT/WHOI Joint Program the student author grants to MIT and WHOI permission to reproduce paper and electronic copies of the theses in whole or in part and to distribute them publicly.  In cases where Significant Use is made of equipment or facilities provided to WHOI without copyright restrictions, the student must grant to WHOI royalty-free permission to reproduce and publicly distribute copies of the theses.  Software code, patentable subject matter and other Intellectual Property contained in all theses are subject to the general WHOI Intellectual Property Policy.

WHOI Affiliate Intellectual Property Assignment

It is the policy that WHOI Affiliates through: (a) their employment by WHOI; (b) by participating in a sponsored research project; or (c) by Significant Use of WHOI-administered funds or facilities, thereby accept the principles of ownership of Intellectual Property as stated in this manual. These WHOI Affiliates are required to complete and submit an Intellectual Property Assignment Form and possibly other forms at, or shortly after, an initial meeting with Human Resources (see Forms).  

Affiliate Departure Disclosure

Departing or retiring WHOI Affiliates will disclose their current work and projects to the Office for Technology Transfer.  In the event of specific know-how or protectable Intellectual Property of interest to WHOI is disclosed for which no patent is filed, WHOI may elect to file a patent with the continuing cooperation of the WHOI Affiliate.  In the alternative the Intellectual Property may be licensed to the departing Affiliate with a negotiated royalty to WHOI.  

It is the responsibility of any departing WHOI Affiliate receiving royalties from WHOI to make their own arrangements with Human Resources and the Office for Technology Transfer for forwarding of royalty checks.

License Fee

Whenever possible the Office for Technology Transfer will recover a License Cost up to the date of the License execution through a License Fee paid by the licensee to the Institution.  Alternatively, and at the discretion of the Office for Technology Transfer, a License Cost may be recovered from Gross Royalties.

Royalty Distribution

The Office for Technology Transfer may at its discretion provide for the distribution of funds to Inventors, Departments, WHOI and Technology Transfer prior to the full recovery of License or Commercialization Cost.

Net Royalty Income (Gross Royalty Income less any reductions to recover License and Commercialization Cost) shall be distributed as follows:

  • Inventors/Authors/Creators: 33.34

  • Inventors'/Authors'/Creators' Department(s): 22.22%

  • WHOI Unrestricted Fund: 22.22%

  • Translational Research Fund  22.22%

Net Royalty Income distributions to the Departments will be used to support scientific research or education. Net Royalty Income allocation or spending within a Department will be determined by the Chairperson with due consideration given to the work of the WHOI Affiliate(s) whose efforts generated the Intellectual Property. 

Net Royalty Income distribution to Inventors, Authors, or Creators will be divided equally unless they specify the division, in writing, at the time the invention is made,rwhen the work is created, or at another time prior to technology/invention licensing.  In the event WHOI receives other than monetary consideration in connection with any license, such as equity, such consideration shall be considered Gross Royalties and shall be apportioned according to the above schedule when the equity is liquidated.  Royalty payments to inventors, authors, and creators are subject to federal, state and FICA withholding.

Net Royalty Income distribution to and from the Translational Research Fund will be administered by the Office For Technology Transfer.

In the event that Intellectual Property was createdthrough the use of vehicles or equipment in collaborative ventures and/or in the event that the individual creator of the Intellectual Property cannot be determined with certainty then the revenue will be distributed as follows:

  • Inventors'/Authors'/Creators' Department: 38.89%

  • WHOI Unrestricted Fund: 38.89%

  • Translational Research Fund: 22.22%

The Office for Technology Transfer may postpone the distribution of Net Royalty Income when future expenses relating to commercialization of the applicable technology are reasonably anticipated.

License Fee and Royalty Distribution Exception

In the case of visual images (still or video), whether created by an identifiable individual or through a collaborative effort (e.g. from a vehicle or instrument), License Fees and Gross Royalty Income will be accumulated in a single discretionary account under the Director of Research.  The funds may then be allocated in the most appropriate way for each situation, including but not limited to, the return of a portion of the revenue to the creator(s), application to research support, or support of the Institution infrastructure for obtaining, managing and distributing images.  Decisions on the distribution of these revenues will be made by the Director of Research, based on applications from relevant parties.



IV. POLICY DETAILS BY INTELLECTUAL PROPERTY TYPE

PATENTS

A United States patent is a grant issued by the United States Patent and Trademark Office (USPTO) giving an inventor the right to exclude all others from making, using, or selling the invention within the United States, its territories and possessions, for a period of 17 years from the patent grant (issue date) or, for patents filed on or after June 8, 1995, 20 years from the earliest effective filing date of the application for patent as modified under provisions of GATT (General Agreement on Tariffs & Trade). In some instances, the patent protection may be adjusted to allow for a longer period of protection due to certain USPTO or regulatory delays such as those encountered when seeking regulatory approval from the Food and Drug Administration. The Office for Technology Transfer should investigate whether a WHOI patent is eligible for these adjustments.

Patents may also be granted in foreign countries; procedures for filing, regulations for patentability, and/or the term of a granted patent may vary considerably from country to country.  A common approach to securing patent rights in many foreign countries is to file an application referred to as a PCT application, as this mechanism was established under the Patent Cooperation Treaty.

In 2013 the United States converted its patenting process from a “first to invent” to a “first to file” system.  To be patentable in most countries, an invention must satisfy their legal standards for novelty, utility and non-obviousness.  In the United States, a grace period of 12 months from the first written public disclosure of an invention is allowed to file a patent application. However, significant prior art appearing during this grace period and before the actual patent filing may be used against the patent and therefore, as a general rule if an inventor has failed to file a patent before public disclosure, every effort should be made to complete the submission to the USPTO as early within the grace period as possible. In most foreign countries, an invention is not patentable unless the application is filed before public disclosure (written or oral).The implications of publication or any other public disclosure upon patent rights should be discussed with the Office for Technology Transfer and a decision on patent filing reached promptly so that publication will not be delayed.

Policy Considerations

Research contracts sponsored by the Federal Government are subject to statutes and regulations under which WHOI acquires title in inventions conceived or first reduced to practice in the performance of the research. Rights to intellectual property developed in the course of or pursuant to commercially sponsored research are negotiated as part of that research agreement and recognize who made the inventive contribution and the extent of that contribution.

Disclosure to the Institution

The initial step in establishing contact with the Office for Technology Transfer is usually the submission of an Invention Disclosure Form (see Forms). Upon receipt of a disclosure, the Office for Technology Transfer will begin to investigate the patenting (or other methods of protection) and marketing potential of the technology, taking into account the applicability of both national and international statutes, treaties, and regulations. It is important to understand that any publication or other public disclosure prior to patent filing may impair or preclude WHOI's rights, and the benefits that subsequently flow to inventors, in the disclosed invention. The Office for Technology Transfer should be made fully aware of any planned public disclosure so that accommodations can be planned.  

Evaluation

The Office for Technology Transfer shall be responsible for determining whether a patent application shall be filed on an invention.  Filing determinations may be made on the basis of commercial potential, obligations to and rights of third parties of the invention arising from sponsored research, or for reasons the Office for Technology Transfer, in its discretion, deems appropriate. Although patent protection is sometimes sought for various noncommercial reasons, such as professional status, WHOI will not seek protection for inventions that are not commercially sound, even if the invention is intellectually meritorious, unless otherwise requested by the sponsor.  WHOI will normally seek patent protection on inventions in order to pursue commercial licensing and to comply with the terms of sponsored research agreements.

A representative from the Office for Technology Transfer typically will meet with the inventor(s) as a first step in evaluation. The Office for Technology Transfer may request that the inventors participate in a literature search of prior art.  In some cases, contact with industry, preferably under a Non-Disclosure Agreement, will be made as a part of the evaluation process. Attorneys specializing in intellectual property law may also be contacted.

If the invention arose from a sponsored research project, the Office for Technology Transfer will arrange for the filing of a patent application and negotiate an appropriate license consistent with the terms of the contract provided that the licensing possibilities justify the expense, or that funds for filing have been provided under the research agreement. Affiliates should contact the Office for Technology Transfer for information about the specific terms of individual research agreements regarding patent related rights and obligations and other United States and international patent requirements.

Notice of Patent

If the Office for Technology Transfer receives a patent for a WHOI-owned invention, it should take steps to require that the original and any future copies of the invention or the invention's packaging will display the notice: "patent" or "pat." followed by the invention's patent number.  In certain instances, such appropriate notice may allow WHOI to collect greater damages after prevailing on a patent infringement claim.

Waiver of WHOI Rights

When it has the right to do so, WHOI may, if requested by the inventor and upon the advice of the Office for Technology Transfer, "stand aside" when WHOI declines to patent or otherwise pursue commercial development of an invention.  By standing aside, WHOI agrees not to exercise its contractual or intellectual property rights to the technology, clearing the way for the WHOI inventor to resume ownership of the entire right, title, and interest therein. Inventors may request that WHOI stand aside by submitting a letter to the Office for Technology Transfer (see Forms).

Following the necessary review, the Office for Technology Transfer will notify the inventor, in writing, of WHOI's decision. However, WHOI's decision to stand aside will not limit its ownership rights to patentable improvements in the original invention.

In the event that WHOI agrees to stand aside, the inventor shall assume any reporting duties as required by applicable government organizations.

In accordance with the Bayh-Dole Act, the U.S. Government has certain rights in inventions generated using federal funds, such as grants from the National Institutes of Health.  If WHOI is asked to waive its rights to an invention made pursuant to Federal agency sponsorship, WHOI first must release the invention to the government.  Next, the Office for Technology Transfer will directly petition the agency for a release of rights to the inventor.  However, Federal research agreements are generally subject to a uniform patent law that provides that universities take title to resulting inventions subject to certain obligations concerning the exploitation in the public interest. Federal preferences for licensing, the retention by the Federal government of certain license rights, and march-in rights are typically maintained by the Federal Government. Decisions by the Federal sponsors to permit individual inventors to acquire ownership are generally made on a case-by-case basis. 

Licensing of WHOI Rights

Affiliates may request a license to commercially develop the WHOI-owned inventions themselves provided such licensing would enhance the transfer of the technology, is consistent with WHOI obligations to third parties, and does not involve a conflict of interest. (See WHOI policy on Conflict of Interest and Other Outside Professional Activities.)  Licensing of such rights will be at the discretion of the Office for Technology Transfer.  Inventors should address a written request to license their technology to the Office for Technology Transfer.  Notification to inventors, other than licensees, that a license agreement was awarded shall be limited to a description of the licensee and basic nature of the agreement fee and royalty terms.

WHOI Shop Rights

In some instances, WHOI will have, through a non-exclusive, royalty-free, and non-transferable license, the right to use patented inventions in connection with WHOI's business.  It is not anticipated that WHOI will invoke the Shop Rights doctrine on many occasions, as WHOI will usually have ownership rights by way of the inventor's (or inventors') obligation to assign their rights to WHOI.  WHOI Affiliates may own the rights in a patented invention in which WHOI has an interest, and WHOI would invoke Shop Rights where, for example, the intellectual property was developed using WHOI resources, but not to the extent that constitutes significant use.  In such a case, WHOI and the Affiliate may contract with each other for WHOI’s use of the invention.

MANAGEMENT OF INVENTOR/AUTHOR-OWNED TECHNOLOGY MANAGED BY WHOI

WHOI principal investigators, staff, or students who wish to pursue the development of their independently-owned technology through the Office for Technology Transfer may offer to assign their rights to WHOI by submitting an Invention Disclosure Form. The Office for Technology Transfer will evaluate the commercial potential and determine whether or not the invention will be accepted for ownership and licensing by WHOI as the assignee under the usual royalty sharing policies.

COMMITMENT OF FUTURE INVENTIONS

WHOI will not normally commit future inventions to licensees other than a right of first refusal, even where improvements to the technology are anticipated. Licensing of new related developments will be at the sole option of the Office for Technology Transfer.  Some very narrowly drawn exceptions may occasionally be appropriate to handle subordinate patents and well-defined derivative works for licensed software.

CONSULTING CONTRACTS

As a general practice, WHOI does not negotiate consulting contracts for individual inventors/authors.  At times, the Office for Technology Transfer may identify a consulting opportunity as part of a license arrangement and will bring that to the attention of the affiliate.  However, the negotiation of the consulting agreement will remain the responsibility of the affiliate 

COPYRIGHTS

As provided in Copyright Law, a copyright owner has the exclusive right to reproduce the work, prepare derivative works, distribute the work by sale or otherwise, and display or perform the work publicly.  For an individual author, copyright protection of a work extends for the author's life plus 70 years. For employers, copyright protection of a work made for hire extends for 95 years from the date of publication or 120 years from the date of creation, whichever duration is shorter.

Registration with the Copyright Office of the Library of Congress is not required to secure copyright protection. Rather, protection begins as soon as a copyrightable work is "fixed" in some tangible form. In order to pursue legal action against infringement, however, registration must be in place. 

Policy Considerations

WHOI seeks to protect the copyright of copyrighted materials such as books, articles, multimedia works, electronic works, and publications generally in order to recognize authorship and protect the integrity of the work.  Protection is essential for WHOI to license copyrightable materials to commercial book publishers and others, and to comply with the terms of sponsored research agreements. 

Notice of Copyright

A copyright is established at the time expression is fixed in a tangible medium. Although a copyright notice is not required for protection, including notice on a published copyrighted work is advantageous to the copyright holder in the event that infringement occurs and because it provides notice of ownership to a potential licensee.  Accordingly, all published WHOI-owned copyrighted works should bear the following notice:

"Copyright YYYY WOODS HOLE OCEANOGRAPHIC INSTITUTION. All rights reserved."

Alternatively, where space may be limiting, the notice can be abbreviated as:

“YYYY WHOI”.

The date in the notice should be the year in which the work is first published. The copyright line may also acknowledge the creator of the work. For examples see the Appendix, WHOI Photo/art credit formatting.  No notice other than the foregoing is to be used for WHOI-owned works. Regarding placement, one masthead notice is sufficient.  For example, the notice may be placed on only the homepage of the Institution's website.  At WHOI's discretion, however, the notice may be placed more frequently on copyrighted materials. Further, for enhanced copyright protection, certain works should be registered with the United States Copyright Office using its official forms. Questions concerning copyright notices and registration should be brought to the Public Information Office.

Procedures

Copyrightable media owned by WHOI are generally licensed through the Public Information Office in consultation with the Office for Technology Transfer.  The commercialization and ownership rights of media obtained by WHOI Affiliates during the course of their research or other WHOI-paid or sponsored activities belong to WHOI and policies in this manual apply to such works.

At WHOI's discretion, media for news outlets and educational works may be provided gratis or at low cost. Media licensed to WHOI Affiliates for profit-making ventures will incur a nominal fee or a percentage share of the gross profits. Typically, no licensing restrictions will be imposed on the scientific use or publication of WHOI owned media by WHOI Affiliates.

The Director of Communications will arbitrate issues concerning copyright or licensing of media.  At his or her discretion, the Director of Communications may convene an advisory panel consisting of the Director of the Office for Technology Transfer, the Director of Grant and Contract Services, the Director of Research and representatives from the MBL-WHOI Library, members of the scientific departments, and representatives from the Board of Trustees.

Federally Sponsored Research

Federal research agreements currently vary widely with respect to rights in copyrightable technical data and computer software, but in general institutions have the right to copyright and to control distribution of the materials.  Federal sponsored research agreements may provide the government with specified rights in copyrightable material developed in the performance of the research.  These rights may consist of title to such material resting solely in the government, or they may consist of a royalty-free license to the government with title vesting in WHOI.

When a work is created under the terms of a Federal sponsored research agreement, authors of copyrightable works should be aware that there may be contractual terms relating to the form of the report, advance notice to the sponsor before publication, etc.

Industry Sponsored Research

In the case of industrial sponsorship where the sponsor acquires license rights, WHOI will seek approval of the sponsor prior to releasing its ownership rights in favor of the author.

Waiver of Rights to WHOI

When it has the right to do so, WHOI may, if requested by the author(s) of copyrighted works that are not Works for Hire, and at WHOI's discretion, "stand aside" in those situations where WHOI believes that such action would enhance the transfer of intellectual property to the public, is consistent with WHOI's obligations to third parties, and does not involve a conflict of interest. By standing aside, WHOI agrees not to exercise its contractual rights to the intellectual property, clearing the way for the WHOI author(s) to seek ownership of the copyrighted works.

WHOI affiliates and authors of works made for hire, with agreement of the Department Chair and all of the coauthors, may request a license from the Director of Communications in consultation with the Office for Technology Transfer to commercially develop their WHOI-owned works, may request to have the works openly distributed through royalty-free licenses, or may request that the works be placed in the public domain by submitting the letter that is the `Stand Aside' Agreement (see Forms).

Licensing to Authors

Authors may request control of the copyrighted material through a grant of commercial license rights. As a general matter, WHOI Affiliates who write print-form textbooks without significant use of WHOI resources will be permitted to own the copyright in such text books and to retain all income generated.

Consistent with the public interest, WHOI may grant the request for author control but WHOI will retain title to the work, with the right to use it for internal purposes, the right to the payment of appropriate royalties, and the right to withdraw such licensing rights if the authors have not achieved effective dissemination in accordance with the terms and conditions negotiated as part of the license agreement. In addition, such arrangements will be subject to WHOI's Conflict of Interest and Other Outside Professional Activities Policy. Written applications for a grant of commercial license rights should be made to the Director of Communications.

Where such requests relate to major projects that typically involve multiple authors and long development periods, determining the most effective course for dissemination will require discussion and special negotiation with the Executive Vice President & Director of Research, the Director of Communications, and the Director of the Office for Technology Transfer.

WHOI will respond to author requests made under this policy within thirty (30) days.  However, in cases where the work, generally software, is not sufficiently developed to allow proper assessment, WHOI may require additional product development prior to responding to an author request.

"Fair Use” Defense

Not all unauthorized copying of copyrighted material is copyright infringement. Determining whether an act of infringement is a Fair Use requires the weighing of at least four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  Questions pertaining to Fair Use and possible copyright infringement should be directed to the Office for Technology Transfer.  Fair Use determinations are exceedingly fact dependent and each situation may vary accordingly.

Public Domain

Authors may request that otherwise copyrightable material, including computer software, be placed affirmatively in the public domain or under an open source agreement if such action will promote widespread use.

In responding to a request for public domain, WHOI will weigh the advantages of improved access, the complexity of the work and whether or not it is ready for effective public use, whether its quality can be maintained, and the author's reasons for seeking this mode of dissemination. Requests to place images, sound or other media into the public domain should be addressed to the Director of Communications.

Requests concerning software or other technology should be addressed to the Office for Technology Transfer.  In such cases, the Office for Technology Transfer should be consulted when the authors of the software wish to distribute it via Open Source mechanisms. The Office for Technology Transfer will advise on sponsor obligations, if any, and will advise on the acceptable forms of Open Source distribution to prevent any inadvertent effect on other WHOI intellectual property.

Distribution of Images and Other Media for Research Purposes

Media resulting from government-sponsored research are embargoed for two years from the end of the expedition or project. Distribution of the images before the two-year date is at the discretion of the Principal Investigator. After two years it is presumed that the images are eligible for distribution unless the grant or contract has specific language or the Principal Investigator has notified the Public Information Office and the Institution archives otherwise.  Distribution for scientific or educational purposes may occur from the Institution archives provided the images have been deposited.  The Institution archives and the Principal Investigator may recover costs associated with the transfer or distribution of the images.

Distribution of Images and Other Media for Non-Research Purposes

Provision for news programs, science programs, textbooks, encyclopedias, CDs, DVDs, exhibits or displays and other educational or commercial research uses where the media are a small part of the product, will be provided through the Public Information Office based on the fee schedule in effect. Users will be required to provide appropriate credits:

"Copyright YYYY WOODS HOLE OCEANOGRAPHIC INSTITUTION. All rights reserved."

The photographer or designer may also be credited (see the Appendix, WHOI Photo/Art Credit Formatting for examples).  Decisions on the use of media that are a large or the sole part of a news or science program, textbook, CD, DVD, or exhibit will be negotiated by the Public Information Office in consultation with the Office for Technology Transfer.

The Public Information Office will seek appropriate permissions from investigators for images falling within the two-year guidelines.  Media created from projects or expeditions concluded for over two years will be assumed to be distributable, unless language in the contract or grant specifies otherwise or the Principal Investigator notifies the Public Information Office or the Institution archives of special contingencies. Generally, media for news outlets and educational works are provided gratis or at low cost.  The use of WHOI-owned media by WHOI Affiliates will incur a nominal fee or a percentage share of the gross profits.

Distribution of Tangible Research Property in Digital Form

WHOI Tangible Research Property (TRP) that is distributed in digital form may be protected with an encryption device that prevents unauthorized access and copying, subject to the approval of the Office for Technology Transfer.  The Digital Millennium Copyright Act (DMCA) affords copyright holders who protect their copyrighted works with such devices additional protections by prohibiting the circumvention of access and copy control measures. Encrypted works should also carry "copyright management information" such as a digital watermark or other mark that identifies the TRP as WHOI's property. The DMCA prohibits the removal or alteration of such identifying measures by unauthorized parties.

Images and Corresponding Data Created by Non-WHOI Investigators

The commercial rights of ownership in images taken from WHOI ships, Autonomous Underwater Vehicles (AUVs), Remotely Operated Vehicles (ROVs) and submersibles or other equipment or vehicles by non-WHOI investigators are governed by WHOI policies on the use of its equipment as agreed by users or as otherwise agreed to by WHOI. Copies of documents executed in association with such images should be supplied to the Public Information Office and Grant and Contract Services.  For documentation of the scientific record and for the preservation of the history of the Institution, regardless of the home institution of the Principal Investigator, copies of all images, audio and data, created through the use of WHOI's ships, AUVs, ROVs, and/or other instrumentation, should be deposited into WHOI's archives.  The Principal Investigator is responsible for facilitating the transfer of images and data to the WHOI archives. Procedures for the transfer of images from the National Deep Submergence Facility are in place and may be consulted on the web at: http://www.whoi.edu/marine/ndsf/vehicles/archiving.html.

Images and Data Created by WHOI Affiliates with the Use of Non-WHOI Technologies

Images and data created by WHOI investigators will be covered in the policies as described above. Contracts assigning ownership of intellectual property to the grantee will be amended to include a request for a copy of the resulting intellectual property to be archived at the WHOI archives.

Export Controls

The exportation of technology will most likely require clearance by the WHOI Security Office in order to conform with U.S. export controls.

GIFTS TO WHOI

Occasionally the Institution is the beneficiary of gifts and donations of various forms of intellectual property such as books, instruments, images, film, etc.

Any department or person who might be in a position to accept a gift of intellectual property for the Institution should request that the donor sign the Deed of Gift Form (see Forms).  The form should reside in the files of the department that is holding or is responsible for the intellectual property.

Gifts of patents require in-depth review with the Office for Technology Transfer, the Development Office, and the Controller's Office and should not be accepted without prior authorization from the Development Office.

DEFAMATION

All works copyrighted under WHOI's name should contain only truthful statements when referring to individual people or entities comprised of people.  False statements, written or spoken, may be defamatory if they are harmful.

Whether a statement is defamatory depends upon the legal status of the statement's subject. Private individuals are entitled to more protection than public figures. A statement about a private individual may be defamatory if the person who published it did so negligently whereas a statement about a public figure must have been made with "actual malice" (i.e., knowingly making a false statement or making a statement with reckless disregard for whether it was true).  WHOI Affiliates should consult with the Office for Technology Transfer if there is a question about whether a statement is defamatory.

RIGHT OF PUBLICITY

In many cases, WHOI Affiliates will have to obtain the consent of all persons appearing in a work before commercial distribution. All WHOI Affiliates should consult the Public Information Office before distributing works that use or include a specific person's image, voice, biographical information or identity.

TRADE AND SERVICE MARKS

It is WHOI policy that trade and service marks relating to goods and services developed at WHOI will be owned by WHOI. Trade or service mark ownership is not dependent upon federal or state registration, but upon use of the mark.  Registration of trade and service marks may be obtained on both the state and federal levels.  However, to apply for a federal registration of a mark, it must be used (or be intended to be used) in interstate commerce.

A trade or service mark may be used to protect those names and symbols associated with certain WHOI activities and events and with certain technology developments such as computer programs.  Prior to registration for trademark protection, the designation:

              "TM" after a trademark, or

              "SM" after a service mark,

will give adequate notice of a claim of ownership.  The designation

"®" (the capital letter R in a circle)

for a trademark may only be used after Federal registration. Trademark protection carries with it certain obligations, including legal obligations on WHOI as holder of the mark.  Therefore, the use of trade and service marks to protect WHOI-owned technology or to designate WHOI as the origin of a product, event, activity, service, or the like, may be instituted only at the direction of the Office for Technology Transfer or the Public Information Office.

MASK WORKS

Protection of a mask work commences with registration of the work or its initial commercial exploitation anywhere in the world.  In the U.S., mask works are registered with the United States Copyright Office.  Under the Semiconductor Chip Act of 1984, mask work protection extends for 10 years and gives the owner of the qualifying mask work exclusive rights to its exploitation.  Failure to apply within two years of the initial commercial exploitation anywhere in the world results in the termination of the exclusive rights and the work being entered into the public domain.

To protect mask work rights, the following notice is to be applied on all WHOI-owned semiconductor chip products which incorporate mask works:

"Mask Work (or M in a circle) WOODS HOLE OCEANOGRAPHIC INSTITUTION."

Mask works owned by WHOI are to be licensed through the Office for Technology Transfer.  Any exception to this procedure must be approved in advance by the Director of Research.  In general, mask works royalties will be allocated according to the Royalty Distribution policy.

TANGIBLE RESEARCH PROPERTY

Although Tangible Research Property (TRP) is distinct from intellectual property, it may be associated with intellectual (intangible) property rights. For example, genetically modified biological organisms may be patented, and computer software may be either patented or copyrighted. TRP should not be distributed until the Office for Technology Transfer has been consulted regarding securing intellectual property protection and/or using some form of contractual agreement, such as a formal contract, loan agreement, letter agreement, or user license. The distribution of TRP does not function as a transfer or assignment of any underlying intellectual property rights.

It is WHOI policy that any commercial distribution of WHOI-owned TRP be handled only through the Office for Technology Transfer.  If TRP developed by WHOI is to be distributed to outside users for commercial purposes, the distribution agreement must contain provisions negotiated by the Office for Technology Transfer covering the terms under which the property may be used, limits on WHOI's liability for the TRP or products derived therefrom, and other conventional license agreement terms including those relating to any intangible property rights (such as patents) which also may be associated with the use of the TRP.  WHOI Affiliates shall not sign an agreement under which WHOI distributes or receives TRP without first consulting the Office for Technology Transfer or the Public Information Office.

Where TRP is developed in the course of research that is subject to the terms of a sponsored research or other agreement, control over its development, storage, distribution, and use is the responsibility of the Principal Investigator, who will consult with the Office for Technology Transfer or the Public Information Office.  In other cases, significant use of Institution resources will be presumed, so control over TRP rests jointly with the Department Chair and with the Office for Technology Transfer. The responsibility for control includes determining if and when distribution of the TRP is to be made beyond the laboratory for scientific use by others in accordance with the terms of this policy.

Each item of TRP should have an unambiguous identification codeand name sufficient to distinguish it from other similar items developed at WHOI or elsewhere. The Office for Technology Transfer or, in the case of still or moving images, the Director of Communications should be consulted for assistance in developing appropriate identification systems.

It is WHOI policy that any commercial distribution of WHOI owned TRP be handled only through the Office for Technology Transfer, or the Public Information Office for audio and visual materials, unless arrangements are made for independent development by the inventors/authors subject to provisions of applicable grants or contracts and Institution policies. Software should be submitted to the Office for Technology Transfer in the same fashion as a potentially patentable invention, for which the first step is preparation and submission of an Invention Disclosure Form (see Forms).

Distribution of TRP for Scientific Research

In keeping with the traditions of academic science and its basic objectives, it is the policy of WHOI that results of scientific research are to be promptly and openly made available to others.  Since the traditional modes of dissemination through scholarly exchange and publication are not fully effective for most TRP, it is WHOI policy that those research results which have tangible form should also be promptly and openly made available to other scientists for their scientific research, unless such distribution is inappropriate due to factors such as safety, the need to more fully characterize or develop the TRP prior to distribution, or unless such distribution is incompatible with other obligations.

Distribution of TRP with Potential Commercial Value

Scientific exchanges should not be inhibited due to potential commercial considerations. However, TRP may have potential commercial value as well as scientific value, and the Principal Investigator who may wish to make TRP available for scientific use in a manner that does not diminish its value or inhibit its commercial development should seek guidance from the Office for Technology Transfer or the Public Information Office. The normal mechanism for commercialization of TRP is through licensing agreements as set forth in the Intellectual Property Agreement and License Form (see Forms).

In the event that WHOI TRP will be distributed for commercial purposes, the Office for Technology Transfer and/or the Public Information Office shall negotiate the terms of use and license.

Distribution of Biological TRP to Research Colleagues

Biological materials are in many cases patentable and licensed for commercial purposes under various types of patent licenses. They are also a form of Tangible Research Property that can be distributed for commercial and/or research use, regardless of whether or not they are covered by an issued patent or described in a pending application.

Biological TRP owned by WHOI may usually be distributed for research purposes only with minimal conditions attached.  Any such distribution is subject to an agreement by the recipient that commercial development or commercial use or further transfer of the biomaterial is not to be undertaken. In addition, the Principal Investigator may wish to control subsequent use, for example, by requiring recipients to follow a specific research protocol in the use of the biological materials. Thus, it is essential that a Material Transfer Agreement be in place prior to distribution (see Forms).

When distributing biological TRP to research colleagues outside the laboratory, costs of the materials and handling may be recovered from the recipient, and returned to the account that funded those costs. When costs are charged for TRP distribution, adequate documentation must be maintained for audit purposes.

If there is a possibility of biohazard or other risk associated with the transport, storage, or use of a particular biological TRP, or if the recipient is likely to use the TRP for clinical research, the Office for Technology Transfer should be contacted for advice on the appropriate form of disclaimers of liability and indemnities.

If the biological TRP was developed under a commercially sponsored research agreement, the Office for Technology Transfer should be contacted for advice on possible contractual obligations with respect to the TRP prior to its distribution for noncommercial purposes. Distribution of biological TRP that is part of a patent or patent application should be coordinated through the Office for Technology Transfer.

Distribution of Computer Software

The distribution of WHOI-owned computer software to colleagues for research purposes must be coordinated with the Office for Technology Transfer if the software has potential commercial value, if the Principal Investigator wishes to control subsequent use, or if it is subject to the terms of a sponsored research agreement.

The Office for Technology Transfer will provide wording for the distribution agreement necessary to preserve commercial value and will arrange for trademark and copyright registration as appropriate.  The Office for Technology Transfer provides the service of distribution of software for non-commercial research use, charging recipients only the costs associated with reproduction and distribution.

Software Acquisition

WHOI will make every effort to avoid the acquisition of software programs, either commercial or otherwise, which by their license rights constrain the use of the software by the WHOI community or impair WHOI's right to develop and distribute software which is dependent upon the acquired software.

Whether the software and databases used at WHOI are owned by users or third parties and are protected by copyright and/or other laws, or subject to license or other contractual arrangement, it is the policy of WHOI that users abide by any legal restrictions imposed by the owner of the software or database.

Open Source software licenses in place at WHOI have specific requirements and restrictions. It is WHOI policy that any extensions to, or derivative works from, Open Source software comply in all respects with the Open Source software license requirements. It is the responsibility of the owner of the protected software or database to make the nature of the restrictions known to the user.

TRADE SECRETS

The law of trade secret may be applied to almost any secret that is used in business and gives the owner of the trade secret a competitive edge over others. It is used to protect valuable proprietary information and is a commonly used form of protection for software.

WHOI Affiliates have an obligation to maintain all WHOI Trade Secrets and other confidential information as secret. The protection will remain legally valid only as long as a trade secret is maintained. In order to maintain protection while a trade secret is being used, it is necessary to bind those individuals having access to the secret by a contractual agreement to not disclose it. Other protections are also recommended, such as labeling proprietary material as "confidential," and limiting access to such material on a "need to know" basis.  Nondisclosure or confidentiality agreements must be signed before any trade secret disclosure occurs. In some instances, these agreements may be enforceable even after the term of affiliation with WHOI.

The protection of WHOI's or third parties' confidential information and/or material used in conjunction with research projects is covered by either Sponsored Research agreements with outside sponsors, Non-Disclosure Agreements, or Intellectual Property Agreements and Licenses (see Forms).



V. FORMS

Forms and Use

Deed of Gift

When WHOI receives a gift of intellectual property (other than a patent), this form is used to transfer ownership from the giver to WHOI.

Patent Agreement

It is WHOI policy that all WHOI Affiliates accept the principles of ownership of intellectual property as stated in this document. All WHOI Affiliates (other than those adjunct or guest investigators who demonstrate that they have executed an intellectual property assignment with their home institution) must complete this form at initial check-in at Human Resources and it will remain on file for the duration of their affiliation with WHOI. The Assignment will be kept on file following the Affiliate's separation from WHOI in case it is later determined that the Affiliate generated intellectual property while at WHOI.

Intellectual Property Agreement

Tangible Research Property, including that under commercial use, can be simultaneously distributed to academic organizations solely for research purposes when this agreement is in place.

Invention Disclosure

Inventions or technology developed under WHOI-administered programs, either as Work-for-Hire or with Significant Use of WHOI funds or facilities, should be submitted to the Office for Technology Transfer using this form. Also, WHOI Affiliates who wish to pursue the development of their independently owned technology through the Office for Technology Transfer may offer such technology for evaluation by submitting this form.

NDSF Sample and Data Log

This is for use with the transfer of images from the National Deep Submergence Facility (NDSF) to the WHOI archives.

Non-Disclosure Agreement

An agreement used to restrict the public dissemination of intellectual property. The Agreement can be used prior to filing an application for patent or to maintain protection while a trade secret is being used. It binds those individuals having access to the information (i.e., the invention or secret) not to disclose it. Non-Disclosure Agreements can be used when WHOI receives information from a third party or when a WHOI Affiliate wishes to share the Institution's information with others.

Request for Waiver of Copyright Ownership

A WHOI Affiliate wishing to pursue development of WHOI-owned intellectual property he or she authored or invented, may request a waiver or license of WHOI's applicable contractual and/or intellectual property rights by submitting this form to the Office for Technology Transfer or the Public Information Office.

"Stand Aside" Agreement

Inventors may request that WHOI "stand aside" by submitting this agreement to the Office for Technology Transfer when WHOI declines to pursue commercialization. By standing aside, WHOI agrees not to exercise its contractual or other rights to the technology, clearing the way for the WHOI Affiliate to seek ownership.

All forms can be found on the Office for Technology Transfer website:

https://techtransfer.whoi.edu

VI. RELATED FEDERAL ACTS AND LAWS AND WHOI POLICIES

Federal Acts and Laws

Copyright Act:
http://en.wikipedia.org/wiki/Copyright_Act_of_1976

Export Administration Act:
http://en.wikipedia.org/wiki/Export_Administration_Act_of_1979

Arms Export Controls Act:
http://en.wikipedia.org/wiki/Arms_Export_Control_Act

General Agreement on Tariffs and Trade (GATT): http://en.wikipedia.org/wiki/General_Agreement_on_Tariffs_and_Trade

Patent Cooperation Treaty:
http://en.wikipedia.org/wiki/Patent_Cooperation_Treaty

Patent Reform Bill (America Invents Act):
http://en.wikipedia.org/wiki/Patent_Reform_Act_of_2011

Bayh-Dole Act:
http://en.wikipedia.org/wiki/Bayh%E2%80%93Dole_Act

Digital Millennium Copyright Act:
http://en.wikipedia.org/wiki/Digital_Millennium_Copyright_Act

Semiconductor Chip Protection Act 1984: http://en.wikipedia.org/wiki/Semiconductor_Chip_Protection_Act_of_1984

Shop Rights: http://en.wikipedia.org/wiki/Shop_right

Institution Policies

Conflict of Interest

http://www.whoi.edu/page.do?pid=18997&&ct=901&cid=421#0  

Outside Professional and Commercial Activities

http://www.whoi.edu/fileserver.do?id=47777&pt=2&p=55807

National Science Foundation Conflict of Interest

http://www.whoi.edu/fileserver.do?id=47779&pt=2&p=55807

National Deep Submergence Archiving Policy

http://www.whoi.edu/main/ndsf/archive-policy

Employment Policies

http://www.whoi.edu/HR/page.do?pid=14332

VII. WHOI PHOTO/ART CREDIT FORMATTING

Published in Print

Credit appears vertically along edge of artwork

--Ideal location is lower right corner

--Reads up from bottom, facing out

--No smaller than 6 pt

Published Online

Credit appears in caption

--At end of caption

--In parentheses

--Start credit with either:

(Photo by…) or (Map/Schematic/Chart by…)

--Exception: when photographer not known:

(Woods Hole Oceanographic Institution photo)

Created by WHOI PI, student staff

NO

First name last name, Woods Hole Oceanographic Institution

 

Where space is constrained: first name last name, WHOI

 

When source not known:

 

Woods Hole Oceanographic Institution

Never WHOI alone

 

YES

Contract work:

              Elsa Ruiz

 

Stock Photos:

             As stipulated.  If not stipulated

                   Corbis

                    Erich Hartmann/Magnum

Other providers:

Courtesy Frank Kafka, Lamont-Doherty earth Observatory

WRONG

(Photo by Peter Wiebe, WHOI)

Photo Credit: Larry Madin, Biology Dept.)

Illustration by Jayne Doucette

© WHOI

Chris Linder Photography

RIGHT

Print                                                        Outline

Peter Wiebe, WHOI                (Photo by Peter Wiebe, WHOI)

Larry Madin, WHOI                 (Photo by Larry Madin, WHOI)

Jayne Doucette, WHOI           (Illustration by Jayne Doucette, WHOI)

Wood Hole Oceanographic Institution   (Woods Hole Oceanographic Institution photo)



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Last updated: July 9, 2020
 


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