Inventions, Patents, Licenses
Sponsored research and activities take place daily on campuses and in almost every field, ranging from the arts to quantum physics. SUNY researchers have pioneered nuclear magnetic resonance imaging, isolated the bacterium that cause Lyme disease, developed the first implantable heart pace-maker, and made hundreds of other innovative contributions. Today, the university ranks among the top ten research universities in the country in patenting new discoveries.
When an invention or software results from research or other activities carried out in State University of New York (SUNY) owned or controlled facilities, SUNY takes active steps to bring the technology to the marketplace for the benefit of the inventor, the campus, the University, industry, and the public. Each disclosure is evaluated for patentability and marketability, and a patent application is prepared when appropriate. Companies interested in the technology are identified, and licensing or option agreements for commercialization and research contracts for development are arranged. All of these activities are carried out between the Office os Sponsored Programs, campus administration and the Research Foundation's Technology Transfer Offices.
The term "invention" includes new discoveries; techniques, and substances that are novel, useful; and not obvious. These are also the criteria for obtaining a patent. However, the process of technology transfer is not limited to patentable inventions or copyrighted works. Licenses may be negotiated based on "know‑how." That is, the knowledge and skill of a particular investigator related to a specific technology may be marketable even though a patent for some reason cannot be secured. In addition, computer programs or software can be protected by copyright or patent.
The Technology Transfer office (TTO) is staffed by a small group of professionals who evaluate, market, and license inventions. They work very closely with campus researchers and administrators to ensure open communication and regular interaction. Inventors are consulted either by campus administrators or by the Technology Transfer staff during the negotiation of licenses and other agreements.
The first step on the road to patent and technology transfer is through Disclosure.
A person using SUNY‑owned or controlled facilities who discovers an idea, process, or device or develops software that may be patentable discloses that invention or software by completing a questionnaire and sending it through Office of Sponsored Programs to the Central Office of the Research Foundation. The Technology Transfer Office then assists the inventor in following the appropriate procedures to protect patent rights in the invention.
Since it is the policy of SUNY and the Research Foundation to attempt to get inventions into the marketplace for public benefit, inventions should be disclosed promptly and completely by faculty members, students, employees, and all other persons using SUNY‑owned or controlled facilities.
Inventors should note that a complete, dated record of an invention is essential. Accurate records provide the means for establishing the date of an invention and the technical demonstration that the discovery was actually conceived and reduced to practice by the inventor or inventors.
Some of the more important points about record‑keeping include:
- Make entries in ink or indelible pencil into a bound (not looseleaf) notebook;
- Sign and date each page with the month, date, and year,
- Identify the work being discussed clearly by number an description;
- Make notes in sufficient detail to permit understanding and repetition of the work done;
- Describe ideas and conceptions as well as proposed experimental procedures;
- Describe or cross‑reference equipment to another permanent record;
- Enter data directly into the notebook; where this is not possible, identify the data sheets in the notebook and date, sign, and witness the original;
- Enter into the notebook all possible uses and advantages of the invention that can be supported by the data;
- Affix the signatures of two witnesses who are not the inventors.
If appropriate, a disclosure may be sent to a patent attorney, usually a specialist in the inventor's field, who makes a judgment on the invention or software patentability. The attorney consults with the inventor in reviewing the disclosure, adding information where necessary, and preparing the patent application when authorized to do so. Often a company that wants to take out a license will pay for such patenting costs as part of the license agreement.
A company maybe interested in providing research support to an inventor whose work is promising though not yet reduced to practice or otherwise brought to a patentable stage. In return, the company can receive an option, for a license.
The Technology Transfer Offices pursue activities to make SUNY and Research Foundation inventions generally known to industry. A marketing program is developed to promote each disclosure through direct contact with potential licensees. Other activities may include staffing booths and making presentations at national meetings and at conferences arranged around specific research areas. In addition, the Technology Transfer Offices produce nonconfidential descriptions of each invention that are included in brochures describing the technology available for licensing.
SUNY investigators are free to publish the results of their research. However, patent rights ‑ especially in foreign countries ‑ may be jeopardized by disclosure prior to the filing of a patent application; therefore, professional judgment is needed about the timing of publication.
Most foreign countries will not allow a patent on an invention that has been described in a publication or made known in any way. In the United States, public disclosure starts the clock ticking, and a patent application must be filed within one year. The term "public disclosure" is broader in its implications than one might think and includes:
- Actual publication in a journal or book in a form that would enable a knowledgeable person to reconstitute the invention;
- Description in a talk or seminar; and
- A student's thesis - once it is on the library shelf or has been summarized in Dissertation Abstracts.
Often there is confusion between the SUNY policy forbidding confidential research and the practical need to respect proprietary information in industrially sponsored research. There is no conflict between the two.
SUNY or, in the case of sponsored research, The Research Foundation of SUNY, retains ownership of all inventions and software that are made using Research Foundation or SUNY‑owned or controlled facilities. Because the facilities are provided by New York State taxpayers, ownership by SUNY or the Foundation protects the property of the state and ensures that all negotiations are carried out for the public benefit.
A limited exception on ownership provided for in the patent policy involves non‑University organizations and individuals who contract to use SUNY‑owned or controlled research facilities. Under the SUNY Board of Trustees' Policy on Cooperative Use of Research Equipment or the Policy on Emerging Technology Enterprises, such organizations or individuals can retain ownership of all patentable inventions or discoveries that may result. Questions regarding these policies should be referred to the Technology Transfer Offices.
Inventor's Share of Royalty
An inventor receives 40 percent of the gross royalty received by the University or the Research Foundation. "Royalty" is defined as covering various payments that may be negotiated, excluding research funds. These may include up‑front payments or license issue fees, fixed payments (annual minimum royalties), running royalties (percentage of product sales), and termination payments. Such payments are found in various combinations in particular agreements, depending on the license that is negotiated.
Payments for the conduct of research under sponsored programs are not considered royalties since such payments are for the direct and indirect costs of the research. Option clauses within research agreements can lead to licensing agreements, which could produce royalties.
Campus Share of Royalty
University and Research Foundation policies have authorized the return to the inventor's campus of the remaining royalties after the payment of the inventor's 40 percent share. Each campus has established its own guidelines for the further distribution of royalties within the institution. Typically, these provide for the support of research, first in the department of the inventor and then in the rest of the institution.
If an individual discovers an invention or develops software wholly on his or her own time without using University facilities, the University makes no claim to ownership. Any question about ownership will be referred by the Chancellor to a University‑wide committee for investigation and final determination of ownership.
Exclusive licenses are routinely granted. Industrial sponsors may receive options for exclusive licenses to commercialize inventions resulting from research contracts. Typically these licenses are negotiated for the life of the patent.
Sponsoring Agency Guidelines
Federal regulations allow SUNY or the Research Foundation to assert title to inventions made under federal sponsorship. Federal agencies encourage universities to engage actively in technology transfer for the public benefit. The Research Foundation retains title to inventions developed with the use of SUNY facilities when outside funding is involved.
Return of Inventions to Inventor
SUNY has six months after the receipt of a complete invention disclosure to decide whether to patent or continue marketing an invention. Sometimes the University decides not to pursue an invention ‑ because there is insufficient commercial interest or because it is unpatentable, for example. In these cases, ownership of the invention reverts to the inventor unless the federal government or other sponsor has a prior claim. If the invention reverts to the sponsor, the inventor may then petition the sponsor to release it.
Exceptions and Waivers
Any person wishing an exception or waiver from a provision of the Patents and Inventions Policy may appear before the Patent Policy Board to present the case for such an exception. The appeal may be made in writing or in person. The Patent Policy Board then makes a recommendation to the Chancellor for final determination.
Copyright is defined as an exclusive legal right to reproduce, publish, and sell original written and artistic works for a term of the author's life plus an additional 50 years. For "works for hire" or "anonymous” works, the term is 75 years from publication or 100 years from creation, whichever is shorter.
Although registration with the US Copyright Office and use of the accepted notice are not conditions for securing the initial rights, "registration" and "notice" are still important. Registration with the US Copyright Office, which is part of the Library of Congress, is only necessary when there may be litigation.
There are four situations that involve the copyright of work (except for software) by The Research Foundation of State University of New York on behalf of State University of New York:
1. Works produced as a requirement of a grant or contract administered by The Research Foundation of State University of New York. In these instances, the copyright will belong to the Research Foundation unless different terms are agreed to with the sponsor. Royalties earned through the licensing or sale of these materials would be distributed based on applicable sponsor policy, and University and Research Foundation policies.
2. Works produced incidentally to the primary research conducted on a grant or contract administered by the Research Foundation, but not a requirement of that grant or contract. Copyright to material developed incidental to an agreement with a sponsor would reside with the creator. The individual has the option of personally receiving royalties generated from the licensing or sale of this material, or of arranging for the Research Foundation to administer these funds in support of his or her research.
3. Works produced as a part of an individual's responsibilities as a SUNY employee. Copyright title is in the name of the State University of New York if the work was produced as part of the terms and conditions of employment.
4. Works produced by a SUNY employee not as a requirement of his or her SUNY employment or as a work for hire. Copyright belongs to the creator.
The use of university computers may result in the development of computer software. Computer software can be either copyrighted or patented, depending on the particular circumstances. If marketed by the Research Foundation, the software will be administered following the SUNY Patent and Inventions Policy. There are three situations that involve software copyrighted by The Research Foundation of State University of New York on behalf of State University of New York:
1. The software was developed through the use of facilities, funds, or personnel of the University or the Research Foundation. The copyright will belong to the Research Foundation or the University, Royaties generated through the licensing or sale of the software will be distributed to the creator in a negotiated amount not to exceed 40 percent of the gross royalties received.
2. The software was developed as a product or by-product of a grant or contract administered by the Research Foundation. The copyright will belong to the Research Foundation unless different terms are agreed upon with the sponsor. Royalties earned from the licensing or sale of the software will be distributed to the creator in a negotiated amount not to exceed 40 percent of the gross royalties received.
3. The software was developed within the scope of employment or is the result of a work for hire. The copyright will belong to the Research Foundation or SUNY. Royalties generated by commercialization will be retained by the Foundation and distributed in accordance with the policies of the University and the Research Foundation.
The Research Foundation routinely accepts projects from industrial sponsors involving proprietary information, which forms the basis for continued research. The Research Foundation agrees not to disseminate any such properly marked material; however, in no event is the publication of the conduct, the progress, or the results of the research restricted. All of the Foundation's industrial sponsors have accepted this provision.
Rights to proprietary data supplied by the sponsor stay with the sponsor and do not become the property of the Research Foundation or the University merely because the underlying proprietary data have been made available for research purposes. All rights that flow from subsequent research belong to the Foundation or the University, respectively.
Researchers’ Technology Transfer Checklist
1. Know your technology transfer office contact and call any time!
2. Understand that your Institution owns your invention (in your line of inquiry) ... even
if you conceived it in your shower at home.
3. Think about what you want out of a relationship with Industry (funding, publications,
etc.), and tell your tech transfer contact.
4. Keep good tab records: contemporary, in ink, in a bound notebook, pages
consecutively numbered, signed, witnessed and dated
5. Obtain material transfer agreements for anything you send out, and understand who
controls what rights in the ones you sign.
6. Make sure you are in compliance with the IP terms of all grants including both federal
and private funding sources
7. Read the shrink wrap agreement on any software toolset you use. Most require that
you show their trademark -- at the very least.
8. Know the difference between inventorship -- a legal question -- and authorship. Your
institution's policy may allow participants to share in any returns regardless of
whether they are, legally inventors.
9. For best results, learn about the process, if possible bring an interested company
name along with the disclosure, champion the development of your invention,
and stay involved.
10. Did we mention this? Call your tech transfer office - first!