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OFFICE OF SCIENTIFIC AFFAIRS AND BIOTECHNOLOGY

 

RESEARCH RELATED POLICIES AND PROCEDURES

Technology Transfer

When an invention results from research carried out in Research Foundation or State University owned or controlled facilities, the Research Foundation and Downstate takes active steps to bring the invention to the marketplace, for the benefit of the investigator, the Research Foundation, the University, industries, and the general public. Each invention is evaluated for patentability and marketability, and a patent application is prepared when appropriate. Licensing, option agreements, and research contracts are arranged with companies. These activities are carried for both the University and Research Foundation through the Research Foundation’s Technology Transfer Office.

The term “invention” includes new discoveries, techniques, and substances that are novel, useful, and not obvious. These are the criteria for obtaining a patent. However, the process of technology transfer is not limited to patentable inventions. Licenses may be negotiated based on “know-how,” that is, the knowledge and skill of a particular investigator may be marketable even though a patent for some reason cannot be secured. Further, computer programs or software can be protected by copyright or by patent.

The heart of the technology transfer process is the active pursuit of companies that can be expected to have an interest in a particular invention. In conjunction with the Office of Scientific Affairs and the Inventors the Research Foundation's Technology Transfer Office identifies these companies and pursues them by telephone, letters, and visits. The first approach involves the use of a non-disclosing invention description. More specific information is then provided under a confidentiality agreement. Meetings in which the investigator makes a presentation to the company's scientific and technical staff typically follow.

An individual using Research Foundation or State University of New York owned or controlled facilities, who discovers an idea, process, or device that may be patentable, must disclose that invention using the Patent Disclosure Form. The Office of Scientific Affairs and the Technology Transfer Office assists the investigator in completing necessary documentation and following appropriate procedures to protect patentable rights.

Inventions should be disclosed promptly and completely by SUNY faculty members, students, employees, and all other persons using SUNY facilities, since it is SUNY policy to market inventions for public benefit.

Investigators who are unfamiliar with patenting and licensing are often not aware of the need to keep very careful research records. A complete, dated record of an invention is essential. Sometimes record keeping is felt to be a chore that wastes time, but without appropriate records, the technical achievements of an investigator will not benefit anyone. Accurate records help to determine the date of an invention and document the technical demonstration that the discovery was actually conceived and reduced to practice by the investigator(s).

The following suggestions concerning record keeping were made by one of the Research Foundation's patent attorneys:

  • Make entries in ink or indelible pencil into a bound (not loose-leaf) notebook.
  • Sign and date each page with the month, date, and year.
  • Obtain the signatures of two witnesses.
  • Identify the work being discussed clearly by number and description.
  • Make notes in sufficient detail to permit understanding and repetition of 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.

Publication

SUNY publication policy regarding the dissemination of sponsored program information is set forth inBoard of Trustee's Resolution number TR-66-258. It states the following:

Any research or research-related programs conducted by personnel of the University, carried out in State-operated universities or colleges or on University-controlled premises, shall be unrestricted as to the dissemination publicly of the conduct, progress, and results of such research or research-related programs.

Any projects which might be considered justifiable exceptions to the policy or might require review because of extenuating factors shall be submitted to the Board of Trustees for review and final decision.

This policy precludes the University from engaging in classified or proprietary research.

Although investigators are free to publish the results of their research, patent rights (especially in foreign countries) may be jeopardized if the results are disclose before the patent application is filed. Most foreign countries will not patent an invention that has been described in a publication or made known in any other way. The United States requires that patent applications be filed within one year of public disclosure. The point here is not to suppress publication but to ensure that discoveries have the opportunity to pass successfully through the process of technology transfer for the benefit of all concerned.

Public disclosure includes: •Publication in a journal or book in a form that would enable a knowledgeable person to reconstruct the invention. •Description in a talk or seminar. •Incorporation into a student's thesis or publication.

Note that a thesis is considered to be a public disclosure once it is in the library 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.

Ownership

The State University of New York, or in the case of sponsored research, the Research Foundation of SUNY, retains ownership of all inventions that are made using Research Foundation or SUNY owned or controlled facilities. Because the facilities are provided by New York State taxpayers, SUNY ownership protects the property of the state and ensures that all negotiations respect the public benefit.

Since exclusive licenses are routinely negotiated, industry can receive all of the benefits of an invention without the need of ownership. Companies familiar with SUNY policies are usually flexible on this matter.

Personal Inventions

If an investigator discovers an invention wholly on his or her own time without using Research Foundation or University owned or controlled facilities, neither the Research Foundation nor the University makes a claim to ownership. Any questions regarding ownership are referred to a special University-wide committee.

The Technology Transfer Office can accept assignment of personal inventions made by SUNY personnel, thus making available the full range of services to ensure successful marketing.

Investigator's Share of Royalties

The investigator receives 40 percent of the gross royalty received, unless this payment is limited by sponsor regulations. Royalty covers various types of payment (excluding research contract funds) that may be negotiated.

The share of royalties returned to the investigator is quite generous in comparison with universities across the country and constitutes a major incentive for heightening invention awareness and disclosure.

Types of payments included in the definition of royalty are up-front and lump-sum payments, fixed payments (annual minimum royalties), running royalties, and termination payments. These payments are found in various combinations in particular agreements, depending on the license that is negotiated. Including these payments in the royalties ensures that the investigator benefits from the entire license, not just from the royalties that result from actual sales of the product. Payments for research contracts or agreements are obviously not considered royalties since they are for the direct and indirect costs of the research. However, option clauses within research agreements do lead to licensing agreements that would produce royalties.

Campus Share of Royalties

University and Research Foundation policies require the bulk of the remaining royalties to be returned to the operating location after the investigator's 40 percent share has been paid. In accordance with its annual financial plan, the Research Foundation will charge only its administrative overhead rate against the remainder.

Individual operating locations have established their own guidelines for the further dissemination of royalties within their institutions. Typically these provide for a primary flow back to the investigator's department or unit and a larger share to the institution if the royalties exceed a certain amount.