Sponsorship Briefing
draft: November 11, 2003

Benefits  Intellectual Property   Terms


MIT's Center for Bits and Atoms is an interdisciplinary initiative that is broadly exploring the relationship between the content of information and its physical representation, from atomic nuclei to global networks. This document explains CBA's sponsorship structure; a companion executive summary at http://cba.mit.edu/docs/03.11.exec/ covers the research program.

Benefits

CBA sponsorship is based around sharing intellectual property across sponsors and projects, to maximize opportunities for both. Full sponsors receive royalty-free access to all CBA IP developed under their funding, including patents and design copyrights in circuits and software; Affiliate sponsors pay a modest royalty. Additionally, sponsorship provides for regular visits to and from CBA, participation in periodic sponsor meetings and topical programs, and the joint development and transfer of operational embodiments of the intellectual property.

In addition to IP access, there are many ways companies find commercial value from their sponsorship. Among the faculty working with CBA and the Media Lab, here are some historical examples of these mechanisms, followed by a discussion of the mechanics to support them:


New products: Research in Prof. Gershenfeld's group on electrostatic tomography for user interfaces was applied in a show by the magicians Penn & Teller (developed in collaboration with Profs. Machover and Paradiso) to channel real fields to contact simulated spirits. NEC saw this and immediately wondered if the same technology could be used to distinguish between front- and rear-facing child seats in order to control airbag firing, which was a literally life-and-death unsolved problem in the auto industry. On the basis of the strong industry response to a jointly-developed prototype, NEC rushed this technology into production; it came out first in the 1999 Acura and has appeared in many other models since. NEC would have never directly funded magic tricks, just as the MIT researchers would have never taken directed funding to work on child seats, but the freedom to mix basic and applied research across project boundaries not only led to an unplanned product, it proved to be essential to NEC's automotive electronics business because it came along just as their conventional airbag controllers were becoming commoditized. Starting from the access to the enabling IP shared with all the sponsors, NEC has established a strong commercial position through the filing of derivative, proprietary field-of-use IP. Sponsorship has also provided a vehicle for working with other companies; through one of these relationships Motorola developed custom chips to make the electrical measurements and is now a component supplier of them to NEC.



New divisions: The heart of the technology transfer and product development with NEC occurred in an unexpected and intense six-month period, at the end of which NEC had a new product group ramped up in an area with proven technological and and commercial promise. At the opposite extreme is LEGO's success in bringing Mindstorms to market with Prof. Resnick and his colleagues. Seymour Papert originally came to MIT before there was even a Media Lab, attracted by the promise of the earliest general-purpose computers as an educational tool for children. LEGO in turn was one of the Media Lab's first sponsors; they recognized that they would not be able to sustain their business by making incremental improvements to plastic bricks in an increasingly-competitive marketplace, and sought fundamentally new directions for the company. Over the next decade LEGO worked with Profs. Papert, Resnick, and their colleagueson realizing a vision of enabling kids to go beyond creating passive structures to let them engineer active systems. This entailed developing everything from the means to embed sensing, actuation, and computation in LEGO's bricks, to kid-friendly computer languages and programming tools, to the pedagogical principles and contexts to give this all meaning. The result was not just a new product but a new line of business for LEGO.



New businesses: Prof. Joe Jacobson came to MIT with a dream of creating electronic books that look as good as traditional printing. Although his background was in quantum optics, he proposed to do this by developing an entirely new kind of display that would have the optical properties of paper but be electronically switchable. The result was the invention of microencapsulated electropheretic electronic inks, which received significant sponsor as well as press attention. To help commercialize the technology, the lead students on the project (Barrett Comiskey and J.D. Albert) elected to start a new company, E-Ink Inc. Following the invention and proof-of-principle demonstration at MIT, E-Ink took on the ~$100M investment in the teams of scientists and engineers required to scale up to industrial production of the inks and display media. This was done with funding from a number of the original sponsors of the research (including Motorola, Toppan, Lucent, Philips, and Hearst), who were interested in both technological and financial participation in the commercial development of E-Ink. For these companies, an effective way to transfer the research was not internally but to an entirely new business, a partnership that was enabled by the sponsor relationships with the students and faculty as well as their IP access.



New strategies:
If CBA sponsorship is the equivalent of hiring an employee-equivalent, many companies find this to be a productive investment and expand their involvement. Steps beyond basic sponsorship include Media Labs-wide membership, Corporate Research Partnership which stations employees to run a research program on campus, and finally naming grants for new labs. These higher levels can be thought of as being comparable to establishing jointly-run departments or divisions. All share the same intellectual-property access as lower-level sponsors, but represent significantly greater allocations of research time and attention. This kind of investment goes beyond research budgets to draw on corporate support for functions including business development, marketing, and PR. An example is Motorola's naming of the Digital DNA laboratory. Motorola had been aggressively scaling ICs for greater performance, at the cost of ever-greater investments in increasingly competitive markets. The Digital DNA concept was jointly developed around a strategy of moving into embedded chips for new applications. Following the launch through press events at MIT, Motorola externally developed an advertising campaign around the brand to announce this new direction, and internally used it to retarget development effort. From this process a joint managerial group emerged that was embodied in meetings a few times a year bringing together people ranging from Motorola's CEO and CTO to precocious undergrads. This group blurs the boundary between academia and industry, jointly allocating resources ranging from student theses to fab capacity, resulting in new kinds of products for Motorola (such as the device used in NEC's smart seat).
While these examples differ in their details, they share common features in their realization:
  • There is a sponsor interface person who is at least able to understand the work being done at MIT, is as excited as the researchers at MIT, and has stable management support to serve in this role.
  • Work proceeds on the basis of joint projects, with both sides adding value, rather than either simply presenting requests.
  • Projects are initiated on a "ready-fire-aim" basis, quickly starting in plausible directions rather than carefully planning them because the final outcomes are rarely what was initially anticipated.
  • The work at MIT represents either very rapid short-term reductions to practice, or very long-term explorations, bracketing the intermediate time scales more typically handled by sponsors in which it's possible to write detailed timelines and milestones. This division of labor can roughly be understood as MIT exploring the space of possibilities to find what ideas do and do not work, and then sponsors committing their much more expensive internal resources to develop the ones that emerge from this filtering.
  • Once an idea can be handed off to sponsors MIT generally ramps down work on it, because its resources should by definition be directed at things that can't be done by sponsors.

Intellectual Property

CBA's IP policies can be understood by following the lifecycle of an invention. At the outset, work in progress is discussed freely with sponsors. This communication can include internal information that cannot be publicly disclosed, but can otherwise be shared within and among sponsors without requiring further agreement. In the reverse direction, the open research environment in CBA precludes the protection of proprietary sponsor information at MIT; when this is required for joint work it is handled on sponsor premises.

Once an invention happens, the first step in documenting it is a disclosure filed by the inventors with CBA's office. These disclosures cover potentially-patentable advances as well as significant embodiments of design copyrights such as milestone releases of programs or devices. This establishes a paper trail for the invention; from these, inventions are prioritized for filing based on weighing their fundamental importance, commercial promise, and sponsor interest. Where appropriate, selected IP is put in the public domain if it is best protected or advanced that way.

The next step is for inventions being pursued to be transmitted to MIT's Technology Licensing Office, which in turn notifies sponsors of the intention to protect the property. At this point sponsors need do nothing to establish their access; neither MIT nor other sponsors can ever do anything to block that. For internal evaluation the IP can be transferred to a sponsor under a pro-forma research use license from TLO, and for commercial use a royalty-free or royalty-bearing product license is needed (for Full or Affiliate sponsors, respectively). The payment terms for the latter are determined case-by-case because they depend on the details of the appropriate market, but these are modest and significantly preferential to those of non-sponsors. At the time of licensing, sponsors can also elect to include in the agreement a period of forward access to derivative enhancements from the same inventor(s) that are dominated by the licensed IP (as long as the sponsorship remains active).

A sponsor working with CBA IP is also likely to generate enhancements. If such a development is the result of joint invention, it is then jointly owned by both parties and available through each's applicable agreements. If an advance is made independently by a sponsor then this derivative intellectual property is solely owned by the sponsor (although of course to practice it access is needed to the enabling CBA IP). This is how sponsors create proprietary positions around shared CBA IP.

Non-sponsors are embargoed from licensing CBA IP for two years from the date of disclosure to sponsors by TLO. For a sponsor seeking added protection around significant commercial plans for an invention, it is possible to lock out non-sponsors from ever licensing the IP by paying a modest added licensing royalty in a field of use (with the lockout remaining in effect as long as the license is active). Because MIT can then no longer license the property (other than to sponsors), these licenses also carry the right to sub-license, but to protect the interests of both other sponsors and MIT such sub-licenses must contain significant added value in sponsor IP (to prevent IP brokering). This mechanism covers business needs such as making sponsor enhancements to CBA IP available to second-source suppliers.

The next step after TLO disclosure is filing to protect the IP. For patents, CBA will pay the domestic filing costs, either for a full patent or for a provisional if a potentially-patentable invention needs protection against public disclosure but remains under active development. Because there are too many foreign markets to feasibly file everything everywhere, sponsors can elect to pay for filing in particular foreign jurisdictions; these payments will be recovered from subsequent licensees in those areas.

A sponsor's intellectual property access is extended to majority-owned subsidiaries. If the ownership is diluted below a majority, or the sponsor launches a start-up, then the IP access can either remain with the parent or be transferred to the subsidiary. Or, if a sponsor company is purchased, its IP rights are transferred to a majority owner.

If there is licensing income on an invention, 15% goes to TLO to cover its operations, and the filing costs are first recovered. Then 1/3 goes to the inventors, 1/3 to MIT, and the remaining 1/3 to CBA. For licensing, a student has the same access to their IP as an Affiliate sponsor: royalty-bearing but on preferential terms that cannot be locked out. For a student to exercise this right, they must be an Officer of the licensing company. The decision to start such a company rests with the student, not CBA, but any faculty participation is subject to MIT's periodic conflict-of-interest review. Faculty are also not permitted to license their own IP outside of such student involvement.


Terms

Full (royalty-free) sponsorship of CBA is $200k/yr, and Affiliate (royalty-bearing) sponsorship is $100k/yr. This cost reflects the carrying cost of a research employee, and is intended to represent a comparable commitment across CBA. These agreements are written with one year rolling renewals, and can be canceled after one year notice is given, with a minimum period of sponsorship before giving notice of one year.