FAQ

Licensing and Patenting

The royalty return policy at Stony Brook University may be found at this site. 

An Invention may be any new and useful process, machine, composition of matter, life form, article of manufacture, software, trademark, copyrighted work, or tangible research property. In order for an invention to be patentable it must be useful, it must be new and original, and it must be non-obvious.

Under your Patent Agreement (part of the Employment Agreement) with the University, you have an obligation to disclose your inventions, whether or not patentable, to OTLIR for evaluation. The development and commercialization of your invention may provide significant public benefit and generate income for research and education. A licensee of your invention may wish to sponsor research in your laboratory. Also, inventors receive a portion of net income generated by their inventions.

Once the university has decided to retain title to an invention, the inventor will be asked to provide a non-confidential marketing summary of the invention. This information allows OTLIR to market the invention through the OTLIR website and other web-based technology marketing services. 

 

If a faculty member starts a company with goals to commercialize his/her own inventions, he/she must disclose such inventions to OTLIR and obtain a license from the Research Foundation of SUNY before the company can initiate any commercial activities.

Yes, but if an invention has used any government sponsorship, the OTLIR is required by law to first return the title of said invention to the sponsor.  The inventor(s) may petition the sponsor for obtaining title of the invention.

Requests for release of technologies disclosed to OTLIR are reviewed case by case.  Not all technologies are suitable for release because they may constitute valuable background technologies or know-how, whether patentable or not, and may be subject under a license agreement. 

Upon proper review of all information relevant to a disclosure submitted, including conducting interview(s) with the inventors, OTLIR licensing staff shall make a decision on filing a patent application within six (6) months of receipt of a disclosure.

The disclosure will first be reviewed for completeness, and any incomplete disclosures will be returned to the inventor.  OTLIR gladly offers assistance and guidance on how to complete the disclosure form should questions arise.  Once the form is complete, it is assigned to an OTLIR case manager for evaluation. The licensing professional responsible for the case will try to find a good way to commercialize the invention for the benefit of the public while generating university income for education and research. After discussing the invention with the inventor(s), the licensing professional will first contact prospective licensees with a non-confidential description of the invention. A prospective licensee may then sign a confidentiality agreement prepared by the OTLIR in order to review confidential information about the invention, such as a scientific manuscript, drawings, working prototype, etc. If the Research Foundation of SUNY retains title to the invention, OTLIR will manage the process of patent or copyright protection, and begin the processes of marketing and licensing.  OTLIR is responsible for all patent, copyright, and licensing costs, and whenever possible, these costs are recouped through license agreements.

You should disclose to OTLIR before your invention has been published or publicly presented. If you disclose an invention to OTLIR after it has been published or publicly presented, there is no longer an opportunity to obtain patent rights outside the US. The opportunity to obtain patent rights in the US ends on the first anniversary of the date of the first publication describing the invention.

The policy on Intellectual Property states the University is sole owner of all intellectual property created through the use of University resources or facilities, supported directly or indirectly by funds administered by the University, developed within the scope of employment by University employees or agreed in writing to be a specially commissioned work.  Exceptions to this ownership right are regular academic work product, work created solely for the purpose of satisfying a course requirement, work covered by a contractual agreement and work resulting from outside consulting activities.

Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how.  Under intellectual property law, the holder of one of these abstract “properties” has certain exclusive rights to the creative work, commercial symbol, or invention which is covered by it.

It is to the benefit of the university, the company and the inventors to ensure the new company is prepared to advance the technology to market in terms of technical, management, and financial capabilities and resources of the company.  To this end, the OTLIR requires that the startup provide a development plan outlining the management team, products/services it plans to advance to market, development plan for the products/services and financing strategy as well as a high level business model for the new company, in order to secure a license agreement.  The plan may be utilized during the negotiation to determine development milestones and develop the financial framework of the deal.  

The process of starting a company begins with disclosing the technology to the OTLIR. The team at the OTLIR will review the technology to determine if the invention is patentable, identify potential products or services based on the technology and determine the market for the technology.  In considering whether the technology is suitable for a startup, we review the commercialization path of the technology, the nature of the technology (eg, platform, disruptive, etc), and interests of the inventor(s).  We share these results with you and if it is determined that a startup is the most suitable path to commercialization, we will work with you to help connect you to the appropriate individuals to establish the company and begin to write a development plan and financing strategy for the company.  It is preferable for the faculty inventor to be partnered with an experienced entrepreneur from the particular industry space who can oversee day-to-day operations of the company, help write the development plan and raise money for the company.  An experienced entrepreneur is not always available at the stage the company is founded, so in the beginning an attorney or other affiliate of the new company can represent the company during license negotiations.

Once the company is established, the OTLIR will engage the new company to enter into good faith negotiations for an option, term sheet or license agreement to enable the company to raise money, proceed with R&D and move the product or service to the market place. The OTLIR is flexible with the types of deals structures for startups and we are willing to work within the reasonable requirements of the startup in terms of timeframes and what is required by the startup to secure financing.  Although we are open to other types of transactions, we typically enter into an option agreement with the startup which enables the startup to secure rights to the technology, and evaluate the technology, and raise money.   Options agreements may license terms, which can help in attracting investors.   

The OTLIR will help connect you to the appropriate individuals to establish your company, generate a business plan, and raise money for your new venture.  Once the company is established, we will work with the management team of the new company to negotiate a license or option to the technology.

Through our network we can help steer you in the right direction in creating a successful venture by introducing you to:

  • Business mentors and entrepreneurs
  • Legal and accounting services
  • Incubator facilities
  • Potential investors and industry partners
  • Resources for navigating conflict of interest policies
  • Resources for Business planning, market assessment & pitch preparation

The best place to start the discussion is with your case manager handling your technology:

Sean Boykevisch, Life Sciences,  632-6952 email: sean.boykevisch@stonybrook.edu

Jennifer Hsieh, Life Sciences,  632-1361 email: jennifer.hsieh@stonybrook.edu

Donna Tumminello, Physical Sciences and Engineering, 632-4163 email: donna.tumminello@stonybrook.edu

If you have not yet disclosed your invention to the OTLIR, please feel free to contact one of the case managers for information on how to disclose your technology and answer any questions about the process of commercialization. We would be happy to walk you through the process.

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