Standard Operating Procedures

 

NEW -  Important Information for Investigators with International Collaborations

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.

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