Guide to the Records of the Technology Licensing Office
AC.0503

 Series 1. Case Files 

Access note

Case Files are open for use after twenty years.

Personal identification numbers on documents in case files are restricted and files will be screened for numbers prior to research use.

Scope and Contents

Case files are started when an invention disclosure is submitted to the Technology Licensing Office. Case files track the evaluation and progress of MIT inventions. The technology licensing officers review invention disclosures, often with inventors and/or a literature search specialist. They examine each invention disclosure to review the following: the novelty of the invention, competing technologies, protectability and marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the intellectual property, and potential competition from other products/technologies. Types of files associated with this series: closed cases, assigned cases, assigned to governement cases, copyright waivers.

 Series 2. Law Firm Patent Prosecution Files 

Access note

Law Firm Patent Prosecution Files are open for use after 20 years.

Scope and Contents

Once the Technology Licensing Office determines that a patent should be filed on an invention because of its novelty and marketability, the office engages outside patent counsel to patent the invention. These files mark the progress of the patent from filing through issuance and expiration or through abandonment of the patent. Many patent files can be associated with each case file. Original letters patent are secured from the U.S. and foreign patent offices. The letters patent are original patent documents. Types of files associated with this series: original law firm patent prosecution files.

 Series 3. Letters Patent, U.S. 

Access note

Letter Patent, U.S. are open for use after 20 years.

Scope and Contents

Once the Technology Licensing Office determines that a patent should be filed on an invention because of its novelty and marketability, the office engages outside patent counsel to patent the invention. These files mark the progress of the patent from filing through issuance and expiration or through abandonment of the patent. Many patent files can be associated with each case file. Original letters patent are secured from the U.S. and foreign patent offices. The letters patent are original patent documents. Types of files associated with this series: abandoned U.S. application files, expired U.S. patent files, letters patent (sometimes referred to as Ribbon Patents).

 Series 4. Letters Patent, Foreign 

Access note

Letters Patent, Foreign are open for use after 20 years.

Scope and Contents

Once the Technology Licensing Office determines that a patent should be filed on an invention because of its novelty and marketability, the office engages outside patent counsel to patent the invention. These files mark the progress of the patent from filing through issuance and expiration or through abandonment of the patent. Many patent files can be associated with each case file. Original letters patent are secured from the U.S. and foreign patent offices. The letters patent are original patent documents. Types of files associated with this series: abandoned foreign applications files, expired foreign patent files, letters patent (sometimes referred to as Ribbon Patents).

 Series 5. Licensee Agreement Files 

Access note

Licensee Agreement Files are closed for 50 years.

Scope and Contents

The Technology Licensing Office enters into many types of agreements and contracts with outside companies and institutions. The most common agreement type in our office is a license agreement through which permission is granted by the owner of intellectual property (MIT) to allow another party to act under all or some of the owner’s rights. A licensee file is created when a party requests rights for intellectual property. There are also other agreement types such as: option agreements (when another party wants to evaluate intellectual property to determine whether to enter into a license agreement); joint invention agreements (when another party or institution co-owns the intellectual property with MIT); and interference agreements which are administrative actions documenting the resolution of a disagreement between MIT and another party in relationship to a patent.

 Series 6. Invention and Proprietary Information Agreements 

Access note

Inventions and Proprietary Information Agreements are open for use after 20 years.

Personal identification numbers on documents in Inventions and Proprietary Information Agreements are restricted and files will be screened for numbers prior to research use.

Scope and Contents

These agreements signed by MIT faculty, staff, graduate students, undergraduates (who are UROP-supported) and visiting scholars assign ownership to MIT of inventions while working under a grant or contract to MIT or making significant use of MIT resources and facilities.

 Series 7. Litigation Files 

Access note

Litigation Files are closed.

Scope and Contents

Litigation files are created when either another party is infringing one of MIT’s patents or another party believes that MIT is infringing one of their patents. These files contain documents pertaining to the litigation.

 Series 8. Software Code Files 

Access note

Software Code Files are closed for 75 years.

Scope and Contents

Software files are treated differently than case files because software is copyrighted, not patented, and different rules apply to copyright. Three types of software files are kept: source code, software case files, and software end-use licenses.

 Series 9. Software Case Files 

Access note

Software Case Files are closed for 75 years.

Scope and Contents

Software files are treated differently than case files because software is copyrighted, not patented, and different rules apply to copyright. Three types of software files are kept: source code, software case files, and software end-use licenses. Types of files associated with this series: software case files.

 Series 10. Software End-Use Licenses 

Access note

Software End-Use Licenses are closed for 75 years.

Scope and Contents

Software files are treated differently than case files because software is copyrighted, not patented, and different rules apply to copyright. Three types of software files are kept: source code, software case files, and software end-use licenses.

 Series 11. Background Reviews 

Access note

Background Reviews Files are open for use after 20 years.

Scope and Contents

These are letters prepared by the compliance administrator with the help of the technology licensing officer that document whether there is any background technology for faculty who are entering into an agreement with an industrial sponsor or a subcontract with a government sponsor. These letters, which document the background technology, are then forwarded to the MIT Office of Sponsored Programs.

 Series 12. Director's Office Meeting Minutes 

Access note

Director's Office Meeting Minutes are open for use after 20 years.

Scope and Contents

These are files which document the TLO’s office procedures, policy change documentation, historical data, and best practices. Types of files associated with this series: minutes of meetings.

 Series 13. Director's Office Administrative Records 

Access note

Director's Office Administrative Records are open for use after 20 years.

Scope and Contents

These are files which document the TLO’s office procedures. These files may include policy guides, policy change documentation, historical data, best practices and office procedures, and chronological files.

 Series 14. Invention Reports 

Access note

Invention Reports are open for use after 20 years.

Scope and Contents

These are reports prepared when a sponsored research contract expires. The report documents the inventions that have been developed during the sponsored research contract period.

 Series 15. Trademark License Files 

Access note

Trademark Files are open for use after 20 years.

Scope and Contents

The Technology Licensing Office manages applications and agreements concerning the use of the MIT name or mark on products. License files contain various documents pertaining to the trademark licensing agreement.