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Any idea, invention, creative work or development
that might result in intellectual property of potential
commercial interest, that was created using the facilities
of SUNY (see SUNY patent and Copyright policies), should
be reported to the Office of Technology Transfer and Innovation Partnerships.
That office will strive to transfer these technologies,
through licensing, to the private sector. Where feasible
companies require inventions to be patented to ensure
the best possible protection and justify the investment
they will make to bring the technology to the public.
Technology Transfer and Innovation Partnerships will market technologies to determine interest
and commercial viability before committing to paying
for patent protection, since in most cases, we cannot
afford to expend thousands of dollars in legal fees
to patent every invention. In many cases patent protection
is not immediately needed or is inappropriate for a
specific technology or work. Such determinations are
made by the Director of Technology Transfer and Innovation Partnerships, together with the inventor or creator,
with legal advise when needed.
Technology Evaluation and Marketing
When a technology or work is reported to the Office of Technology Transfer and Innovation Partnerships, where warranted,
an attorney will oversee a patentability review and
patent search to assess if the discovery is patentable
or if there is a more appropriate protection mechanism.
At the same time, unless the inventor requests we wait,
Technology Transfer and Innovation Partnerships will conduct an initial marketability review to
determine commercial interest.
Certain discoveries,
conceived or reduced to practice while supported by
a sponsored program, are subject to grant or contract
restrictions. The Offices of Technology Transfer and Innovation Partnerships and Research Development Services will review such agreements to ensure
compliance with prior agreements and report
the discovery to that sponsor.
When a legal
opinion is received the need and direction for a strategy for continued
marketing will be determined. In rare instances, we may determine to seek
patent protection in advance of finding a licensee.
Unless directed by a licensee, patent protection will
only be sought in United States.
After six months if
the Office of Technology Transfer and Innovation Partnerships has not successfully identified a potential licensee
for an invention that has been determined to be patentable,
at that time the inventor may request the invention
be returned to them. SUNY Patent Policy stipulates that
SUNY be paid 10 percent of any royalties generated
by inventions released to an inventor that subsequently
generates income.
In some cases, where the invention resulted from sponsored
funding, the public or private sponsor may have rights to any invention
we chose to abandon.
Some platform inventions may lend themselves to forming the core technology on which a local company can be founded by the inventors. The University supports faculty and student entrepreneurship in particular as part of its economic developmentand outreach mission. Invested University technology entrepreuners are encouraged to contact the OTTIP to structure an appropriate business relationship.
Technology Licensing
If a company would like to acquire rights to use or
commercialize copyrighted works or a patented or patent-pending
invention, a license is required.
A license is a legal
agreement by which the owner of intellectual property
promises not to take action to exclude the licensed
party from making, using, and/or selling the intellectual
property.
Where appropriate, licenses are granted on
a worldwide basis. Most companies, whether large or
small, desire worldwide patent protection to secure
foreign markets or to use their assets in establishing
strategic alliances which can add to the further development
of the invention and the distribution of its benefits
to the public.
Types of Licenses
If the intellectual property desired by the company
for commercial purposes is claimed in a patent or patent
application owned by the Research Foundation, the company
must negotiate either an Option Agreement License, an
Internal Commercial Use License, a Nonexclusive Patent
License or an Exclusive Patent License.
An Option Agreement grants the nonexclusive right to
make and use the technology for the purpose of evaluating
its commercial potential. The license is for a limited
number of months and does not grant the right to sell
or otherwise distribute the invention. Companies are
required to obtain a commercial patent license for further
use and/or development of the invention.
Internal Commercial Use Licenses grant the nonexclusive
right to make and use the invention for the purpose
of internal use by the licensee. These licenses do not
grant the right to sell or otherwise distribute the
invention, but allow the licensee to use the invention
as a tool in their commercial development activities.
Nonexclusive and Exclusive Patent Licenses allow a company
to commercialize the invention, under appropriate circumstances
pursuant to applicable statutes and regulations.
An
exclusive license limits the use of the invention to
a single company while a nonexclusive license allows for future licensing of that same intellectual
property to other companies. Most companies are interested
in exclusive licenses which prohibit other companies
from using the technology.
Often inventions derived
from academic research require considerable company
development and investment. Commercialization of a technology
is normally only considered viable when a company can
be assured they will be the only producer of the technology
in its final form.
Exclusive licenses can be written
to allow more than one company exclusive rights in different
geographic areas or to different elements of the invention.
How we License
Normally, as a result of division of research's marketing,
or direct contact between the inventor and individuals
they may know in the industry, TheOffice of Technology Transfer and Innovation Partnerships is contacted by an official within a company who requests
additional information concerning a technology of interest.
Specifics on an intellectual property should then be
protected by execution of a confidentiality agreement
between the company and the Research Foundation. Once
this simple but important agreement is executed by both
parties, the inventor is free to divulge complete information
on the invention.
Oftentimes once the full nature of
the invention is known by the company, and interest
remains, the inventor visits the company or the company
sends a technical expert to campus to examine the invention
in detail or review data and documentation. A draft
license is then prepared by division of research for
review and negotiation by both parties.
License terms
The Office of Technology Transfer and Innovation Partnerships has developed several model license
agreements that serve as the basis for license negotiation.
Licenses tend to be fairly imposing legal documents
but the language and its volume have proven necessary
to ensure a solid and lasting working relationship between
university and industry partners. One of the license
clauses, referred to as Due Diligence requires licensees
to report at least annually on their utilization of
or efforts to utilize license patent rights. Licenses
are revocable for specific reasons, such as non-use
of or failure to develop the invention, or failure to
comply with governing regulations.
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