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.
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.
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.
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