Standard Operating Procedures

 

NEW -  Important Information for Investigators with International Collaborations

Overview of Standard Operating Procedures

We encourage you to contact Office of Technology Licensing and Industry Relations (OTLIR) at the earliest stage of your discovery process to ensure you are aware of the options that will best protect and leverage the commercial potential of your research discoveries. If you think you have an invention with commercial potential or you simply want to talk with someone about how your ideas may fit in a commercial setting, please Contact Us immediately or simply stop by our office.  Our Staff will assist you with your questions and concerns.  
 

Invention Disclosure

We encourage you to contact the Office of Technology Licensing and Industry Relations (OTLIR) at the earliest stage of your discovery process to ensure you are aware of the options that will best protect and leverage the commercial potential of your research discoveries. If you think you have an invention with commercial potential or you simply want to talk with someone about how your ideas may fit in a commercial setting, please contact us immediately or simply stop by our office. Our staff will assist you with your questions and concerns.

Read more about each step of our Process and Procedures:

Invention Disclosure

The first step in the commercialization process is to document and disclose the invention to OTLIR by submitting a New Technology Disclosure (NTD) form through the online Inventor Portal, thus creating a record of the invention, the inventor(s) involved, sponsorship of the work, and public disclosures.  The NTD is a confidential document that provides both scientific and legal information of a technology.

New Technology Disclosures received by OTLIR are logged into our internal database, assigned a docket number (the “050” number), and assigned to a specific licensing staff member for review and management.  The licensing staff member is responsible for the intellectual property management and licensing of the docketed case.

A licensing staff member will set up a meeting with the inventor(s) to understand the technology and its usefulness.  During the initial meeting, the licensing staff member will learn from the inventor(s) the background and novelty of the invention.  This information will help us make an assessment of patentability, potential applications and markets, and possible commercial partners.

Because each invention has its unique characteristics and features, different commercialization strategies apply to different inventions.  For example, if an invention leads to product development (i.e. a new drug, a new medical device, or a new instrument), then the invention will likely be licensed on an exclusive basis.  The exclusivity provides an incentive to the licensee to commit to high risk and high cost product development.  However, if the invention is a useful research tool or software-based innovation, then it may be licensed on a non-exclusive basis.

Developing successful licensing strategies requires access to various sources of information.  The licensing staff member will likely have several back and forth communications with the inventor(s) in order to draw out advantages of the invention that are appealing to potential licensees and/or investors.  Very often, a licensing staff member will need to reach out to companies in order to obtain additional information necessary to evaluate the likelihood of commercialization.  Under such circumstances, confidentiality agreements may be negotiated prior to discussions in order to protect any confidential information related to the invention. 

 

Office of Technology and Licensing and Industry Relations

N5002 Frank Melville JR.

Library Stony Brook, NY 11794

Phone: (631) 632 9009

Email: Sbu_ntd@stonybrook.edu

 

Patents

Based on the invention evaluation, an OTLIR licensing staff will determine whether or not The Research Foundation of SUNY (“RF”) will elect title and file for a patent on the invention (See SUNY IP Policy).  OTLIR does not file patent applications for all invention disclosures it receives due to limited annual patent budget and the high cost of filing ($10,000 - $20,000 per provisional patent application; higher costs if file a regular utility patent application or a PCT – Patent Corporation Treaty).  

It is desirable to have an interested potential licensee before committing to patent filing. However, in rare cases, the commercial potential may justify filing when guarantees of cost reimbursement by potential licensees are reasonably assured. Not all inventions are patentable. The United States Patent and Trademark Office (USPTO) may determine that certain ideas lack "novelty" or "utility." The Patent Office may deem certain ideas "obvious to one skilled in the art" thus not patentable. Furthermore, the Patent Office will not grant patents on ideas that have been part of the "public domain" for a year or more--if you share your idea with a group or an individual, you have one year to patent in the United States. You don't get this "grace period" for IP protection in countries outside the United States--there, you lose when you disclose. Patent rights are the foundation for licensing your ideas. Without them, the potential licensee will not have the leverage to profit from your idea. Therefore, it is important to contact OTLIR about a discovery prior to submitting a manuscript for publication.

The filing and prosecution of patent applications are done by outside patent attorney firms. Technical competence, prior experience in similar cases, and inventor preferences are considered by a licensing staff in her/his selection of the appropriate patent attorney. Patents usually take an average of three to four years to issue and expire 20 years from the date of filing. During the prosecution of the patent, the licensing staff responsible for your docket will communicate with you about progress and may require your assistance in responding to the patent examiner's questions.

If OTLIR (or the research sponsor) decides not to file a patent or to commercialize your invention, OTLIR may assist in allowing RF assign its rights back to you, along with responsibilities of RF to manage the intellectual property. Please note, however, that if the invention was developed using federal support, OTLIR must first seek approval from the government before assigning interests back to you.

Licensing

A license agreement is a contract between RF and a third party in which RF's rights to a technology are licensed (without relinquishing ownership) for financial and other benefits. A license agreement is used with both a new start-up business or with an established company. An option agreement is sometimes used to enable a third party to evaluate the technology for a limited time before licensing. The license may be exclusive or non-exclusive and may limit the allowable field of use.

Marketing of an invention may begin anytime after a disclosure is received by OTLIR.  A marketing effort may start after a licensing staff makes the decision of patenting an invention.  Inventor’s suggestions of companies to be approached are extremely valuable; likewise, any companies approaching inventor(s) for scientific discussions are considered target licensees.  If the company shows strong interest, the parties may exchange License Term Sheet.  Negotiations of the terms require a great deal of flexibility and creativity by both parties and can last several months before a mutually satisfactory agreement can be reached.  Throughout the licensing process, it is important for all parties involved to manage expectation of outcome from the license transaction as financial considerations very widely depending on the technology as well as the licensee.

The inventor's involvement in the licensing process is very important. It is often the inventor's knowledge, contacts, sustained effort, and ongoing interactions with his/her technical counterparts in the licensing company that closes deals and turns invention into product. An inventor may be asked to disclose any other relationships he/she may have with external third parties at the time a license is executed in order to avoid any potential conflict of interests. Licensing is a team effort involving both OTLIR and the inventor and a great deal of trust.

It is often necessary to re-evaluate a licensing relationship to adapt to changed circumstances, or to take into account new situations. Either party can request an amendment to the Agreement at any time during its life.

Royalty

Royalty Return at the Stony Brook campus is currently governed by the applicable SUNY Patent and Inventions policy:

For disclosures made prior to November 23, 2016:

40% of the Gross Royalties are returned to the inventor(s) (Statutory)
60% of the Gross Royalties (adjusted gross royalties) are distributed as

 

to $150 K

$150 K - $550 K

$550 K - $1M

> $1M

Inventor's Lab

15%

10%

5%

0%

President

25%

25%

25%

25%

Supporting Entity

5%

7.5%

10%

12.5%

VP Research

5%

7.5%

10%

12.5%

OTLIR

10%

10%

10%

10%

For disclosures made on or after November 23, 2016, the new SUNY Patent and Inventions policy shall apply.  That policy can be found on the following website:

http://www.suny.edu/sunypp/documents.cfm?doc_id=88  

      

Technology Licensing and Industry Relations
Phone: 631-632-9009
Go to top