Vice President's Message

Intellectual Property Issues: The Basics I
What Qualifies As An Invention?

As members of the faculty of a major research university, who are expected to create new knowledge as well as to transmit accumulated wisdom to students, Stony Brook researchers frequently perform activities that result in inventions, whose broad dissemination may produce broad public benefits. We recognize that it isn’t always easy to determine what constitutes an invention. Since disclosure of inventions made in University facilities is a SUNY obligation, this review is presented to clarify what qualifies as information that should be disclosed to the Office of Technology Licensing and Industry Relations (OTLIR) for evaluation as a possible invention.  The most familiar things that qualify as inventions are any manufactured article (including prototypes and various devices that may be developed as an aid to conducting a research program, as well as resulting therefrom), newly created substances (ditto), software, and algorithms, as well as methods of their use.  New uses of already patented inventions can also qualify as inventions.

In addition, however, the following types of information, data, and results can also qualify as inventions:

• Any data resulting from basic or applied research (including assays and clinical tests);
  
• Any technical data and specifications;
  
• Both pre-clinical and clinical protocols, methods, and results; and
  
• Both business and operational methods and results.

It is apparent from these descriptors that determining whether an invention has been made is a blend of art and science and involves experienced judgment. We strongly recommend, as the best practice in any situation where you think an invention may have been made or where you have any question relating to intellectual property, that you contact OTLIR for advice. Its professionals have decades of experience.  The OTLIR office is located at N5002 Melville Library (around the corner from the Offices of Grants Management and Research Compliance) and can be reached at 632-9009. Basic information is maintained on the OVPR Website at http://www.research.sunysb.edu/ottl/index.html.

The SUNY Patents and Inventions Policy requires that all inventions made by faculty members, employees, students, and any other individuals using university facilities be owned by SUNY through the assignment of the rights to these inventions by the inventors to the Research Foundation.  Federal law and regulations also oblige universities to take ownership of any inventions arising during the performance of government-funded research.  Disclosure of any such inventions by Stony Brook inventors to OTLIR is the critical first step enabling both the individual researcher and the institution to comply with these requirements.

Future Monday Memos will address other intellectual property issues, including the ongoing need to disclose possible inventions and guidance for clinicians submitting investigational new drug (IND) applications.

– Contributed by Chester Bisbee, Director of Technology Licensing and Industry Relations, 632-9009, email Chester.Bisbee@stonybrook.edu

Good News and Coming Events

News

Please join us in rejoicing with colleagues for achievements that have become known since the last issue.

Stony Brook/Brookhaven National Laboratory

Plans for the New York Center for Computational Science, a cooperative effort led by Stony Brook and Brookhaven and involving research institutions and industry through the state and across the country, were announced on October 18 at Brookhaven. The Center will be anchored by a new IBM BlueGene/L Supercomputer to be acquired by the University and the Laboratory with the help of $26 million in state funding obtained through the efforts of Assemblyman Marc Alessi. At 100 teraflops, it will be the fastest supercomputer for general civilian users in the world, enabling computations that, until now, have been impractical for the exploration of questions in fields stretching from biomedicine to finance. The centrality of this machine to the next generation of scientific and technological advance across a broad spectrum of disciplines became apparent in a series of meetings, organized more than a year ago by the University and Brookhaven, involving more than 320 researchers overall, under the broad headings of Computing for Biology, High Performance Computing with BlueGene/L and QCDOC, and Multi-Teraflop Computing in Biology, Materials & Energy Science. The attendees represented New York institutions Columbia, Cornell, NYU, Sloan-Kettering, Mt. Sinai, Einstein, the Wadsworth Center, SUNY Albany, Rensselaer Polytechnic Institute, and two of the State’s largest technology-based corporations, IBM and its Watson Research Center and Bristol-Myers Squibb. Federal agencies included the Department of Energy, the National Cancer Institute and other NIH institutes, the National Science Foundation, the U.S. Geological Survey, and the FDA. Five other major national laboratories participated as well, including Argonne and Oak Ridge, as well as the Salk Institute in California and the Whitehead Institute in Boston; and two dozen other universities including Yale, MIT, Princeton, Duke, and Stanford, as well as the National Center for Supercomputing Applications at the University of Illinois.

Center for Biotechnology, Chemistry and Physics and Astronomy

On the same day as the Supercomputer announcement, NYSTAR (New York Office of Science, Technology and Academic Research) presented Stony Brook with an embarrassment of riches in the form of a second E-CAT award and two Faculty Development Awards.

The purpose of the Enhanced Centers for Advanced Technology (E-CAT) Development Program is to enhance and expand the capabilities of existing Centers for Advanced Technology (CAT) that have achieved a record of success and demonstrate significant potential to increase the economic impact generated by the CAT. The University’s Center for Advanced Technology in Biotechnology and Biomedical Devices received an award of $1.65 million to enhance the Center’s current technology development efforts in several complementary areas of regenerative musculoskeletal and skin bioengineering to generate and commercialize biomedical innovations in the form of diagnostic, therapeutic, and personal care products.

The NYSTAR Faculty Development Program assists institutions of higher education in New York State in the recruitment and retention of leading entrepreneurial research faculty in science and technology fields with strong commercial potential. Under this program, Stony Brook received awards for:

• Nicole Sampson, Chemistry. An award  of $750K “to retain a researcher who is engaged in applying novel molecular enzyme and protein chemistry research to enable the diagnosis and treatment of cancer, tuberculosis and fertility.”
• Chris Jacobsen, Physics and Astronomy. An award of $689K “to retain a researcher who specializes in the design and development of novel fabrication and application techniques used in x-ray and spectromicroscopy optics.”

Medicine/Physiology and Biophysics/Biomedical Engineering

Amy Rosen, an M.D./Ph.D. student with a research specialty in Biomedical Engineering and Physiology and Biophysics, was selected as one of 11 graduate student finalists nationwide in the 2006 Collegiate Inventors Competition for her entry, “Tracking the 3-D Distribution of Delivered Stem Cells In Vivo with Quantum Dot (QD) Nanoparticles,” or “Tracking Stem Cells.” Using nanotechnology—specifically, fluorescent quantum dot nanoparticles—Rosen developed a rapid and reliable method for uniformly labeling stem cells and tracking the tagged cells for up to eight weeks in vivo. She generated, for the first time, a complete three-dimensional reconstruction of the distribution of QD-labeled stem cells in the heart. Such data provides valuable information about the potential safety and efficacy of therapeutic stem cells.

In 2004, a collaborative effort between researchers at Stony Brook University and Columbia University received industry support from Guidant (now Boston Scientific) to further their research for replacing electronic pacemaker devices with a biological solution. Amy joined the laboratory shortly after the project began and her mentor, Leading Professor of Physiology and Biophysics Ira S. Cohen, Director of the Institute of Molecular Cardiology, noted that her approach solves a universal problem for researchers working to develop effective biological pacemakers.

Events

Provost's Lecture Series

November 16: Alice Walker, "Eighth Annual George Goodman Memorial Symposium: The World Is Burning — A Meditation"

An activist and social visionary, Alice Walker won the Pulitzer Prize and the American Book Award for her novel The Color Purple, which was made into an internationally popular film by Stephen Spielberg and is now a Broadway musical. Her other novels include Now is the Time to Open Your Heart, By the Light of My Father's Smile, and Possessing the Secret of Joy. Her new collection of essays is We Are the Ones We Have Been Waiting For: Inner Light in a Time of Darkness.

4:00 p.m., Student Activities Center Auditorium

Wine Center Events

November 2: "Wine Appreciation That Doesn't Take you Over a Barrel–With Cliff Batuello"

Shed the pretentious, mannered, "Sideways" affectation of wine enjoyment. This session will include a comparison tasting featuring wines that reflect both centuries-old traditions and modern innovations in winemaking, as well as some of the social accoutrements accompanying wine. Cliff Batuello is the owner of a small vineyard in Cutchogue. 6:30–8:00 p.m.

Register with secure online payment. $55.00 for the first person, $45.00 for every person in the group after that. $40.00 for one person for three or more events at the same location

Location: Wang Center Note: You must be 21 or over to participate in wine-tasting events. Registration and payment are required for attendance. Please register as early as possible, as space is limited. Please note that the Center has a 48-hour pre-event cancellation policy.

November 16-18: Civic Performance: Building Bridges to a Better Tomorrow

This three-day conference presented by the Humanities Institute will explore the complex issues facing Long Island, bringing together the University, local communities, scholars, and performers.

Day 1: Sustainability—Immigration and the Long Island Economy
Day 2: Surviving the Teenage Years—Youth and Violence
Sponsored by the Frances L. Brisbane Leadership and Service Foundation
Day 3: Protecting Long Island’s Ecosystem—Competing Interests for Improving the Environment

Pre-Conference Lantern Procession Ceremony at Stony Brook University
Wednesday, November 15, 8:00 pm
A Symbolic Coming Together of Community
Special rates for students and seniors
For more information visit: www.stonybrook.edu/humanities

Opportunities and Sponsor Information

 

Upcoming Funding Opportunities

For a complete list of upcoming deadlines, please go to -
http://www.stonybrook.edu/research/fndopp/deadlcal.html

Important News from the National Institutes of Health

NIH Changes Receipt Dates

On October 5, 2006, the National Institutes of Health (NIH) announced broad changes in its standard receipt dates for applications. The changes become effective as of January, 2007. The basic research, R01, applications will be due on February 5, June 5 and October 5 each year. In most cases, the receipt dates add a few days to the old dates with some exceptions. For example, program project and center grant applications are now due January 25, May 25, and September 25; five or six days earlier than the former first of the month deadlines. The new receipt dates are outlined in a notice published in the October 5, 2006 NIH Guide. See: http://grants.nih.gov/grants/guide/notice-files/NOT-OD-07-001.html for details.

NIH made these changes to ease any potential bottlenecks with electronic submission through Grants.gov and NIH's eRA Commons systems. NIH hopes the shift to new receipt dates assists institutional research offices as well by redistributing the deadlines away from high volume days used by other agencies.

Standard (“Parent”) Announcements for Unsolicited NIH Proposals

On October 10, 2006, NIH posted a series of Parent Announcements for unsolicited or investigator-initiated applications. The announcements can be found at: http://grants.nih.gov/grants/guide/parent_announcements.htm NIH created these parent (or standard) application announcements to accommodate the need for a specific funding announcement to facilitate the electronic submission of applications. The parent announcements currently available cover grant mechanisms that require electronic submission through Grants.gov to the NIH eRA Commons. NIH plans to develop an omnibus Parent announcement by November 2, 2006 for the most widely used grant mechanism, the research project grant (the R01), for use by applicants who wish to submit what were formerly termed "unsolicited" applications.

Unless an applicant is responding to a specific announcement, they're submitting an investigator-initiated or unsolicited proposal. The new Parent announcements are NIH-wide, but some NIH institutes may limit their participation, so applicants should check the announcement's statement of interest. Parent announcements will not generally be available for specialized grant mechanisms (e.g. resource programs, construction grants, or education projects).

Just to review: a Program Announcement (PA) identifies areas of increased priority and/or emphasis on particular funding mechanisms for a specific area of science. Applications are usually accepted on the standard receipt dates on an on-going basis. Most investigators apply under a program announcement. A Request for Application (RFA) identifies a more narrowly defined area for which one or more NIH institutes have set aside funds for awarding grants, usually with a single identified receipt date. A Request for Proposal (RFP) solicits contract proposals with, generally, one receipt date. Thus, the Parent Announcements do not describe specific areas of priority or emphasis, special receipt, referral or review considerations and are not linked to set-aside funds. The Parent does provide a Funding Opportunity Announcement (FOA) number and access to the correct application package for submission through Grants.gov

CDC Moves to Electronic Submission

On October 5, 2006, the Centers for Disease Control and Prevention gave notice in the Federal Register that all applications in response to program announcements and requests for applications will be submitted through Grants.gov The CDC uses the PHS/NIH forms for submissions and eRA Commons as its electronic tracking system. As with other Grants.gov posted Funding Opportunity Announcements (FOA), the appropriate forms package will be identified in the FOA.

 

Interdisciplinary Seminars

Please remember that, in an effort to encourage interdisciplinary research on campus, this office will supply $100 toward a speaker's luncheon when your department invites a Stony Brook colleague from an unrelated discipline to give a seminar. Please contact Ann-Marie Scheidt, amscheidt@notes.cc.sunysb.edu, to determine eligibility. You will be asked to provide a copy of the seminar notice annotated with the number of attendees and a brief description of any anticipated collaborations with the speaker's department.

Music for Meetings

Please remember that the OVPR would like to assist those of you who are planning a research meeting on campus by providing musical interludes. If you would like to have Stony Brook student musicians play at the reception for your meeting it can be arranged by contacting Ann-Marie Scheidt, amscheidt@notes.cc.sunysb.edu. Arrangements must be made with this office in advance of the meeting. OVPR will make a payment to the Department of Music and the Department in turn pays the students. You get to listen to some nice music.

 

Essential Policies, Procedures and Resources

15% IDC Rate for SBIR / STTR Phase 1 Subcontracts to SBU Investigators

The Office of the Vice President for Research and the Center for Biotechnology are pleased to announce a new initiative concerning Research Foundation awards that result from Phase 1 Small Business Innovative Research (SBIR) and Small Business Technology Transfer Research (STTR) projects awarded to companies. Effective 10/1/06, the Research Foundation will assess a facilities and administrative (aka IDC) cost rate of 15% of total direct costs on all such new subcontract awards. Since Phase 1 awards are limited to $80K and $150K (new NSF max.) depending upon awarding institute, as well as a percentage of funds that are subcontract eligible, this has discouraged collaborations between industry and our university researchers. STTR awards permit the academic collaborator to apply as Principal Investigator, but all SBIR and STTR are awarded to the small business with subcontracts to the university. Our hope is that a reduced IDC rate through this initiative, will spark corporate and Stony Brook University collaborations, and lead to long term scientific and business interactions. This initiative shall be evaluated for effectiveness after a one year period. Please note that Phase 2 SBIR and STTRs are not covered under this initiative but can provide up to $750,000 total for collaborative commercialization research. Only a successful Phase 1 project is eligible for application for a Phase 2 grant. Further information on the SBIR/STTR Program can be found at http://www.sbaonline.sba.gov/SBIR/

Should anyone have any questions please contact Ivar Strand, Assistant VP for Sponsored Programs at 2-4402 or via e-mail at IStrand@notes.cc.sunysb.edu.

For More Information

Gail S. Habicht is Vice President for Research. She can be reached at (631) 632-7932. An abundance of specific information for the research community is available on our Website, where past issues of this bulletin can also be found.

Office of the Vice President for Research -
http://www.stonybrook.edu/research/

Monday Memo archive - http://www.stonybrook.edu/research/monmemo/mmarchive.html

All Past issue of Monday Memo are keyword searchable.

And if you are challenged by the embarrassment of riches in the over 2,000 individual Web pages that comprise the Website, you may find the alphabetical site index helpful. The index can be accessed at - http://www.stonybrook.edu/research/index2.html.

If you have information you would like to contribute to Monday Memo please email it to the editor, Adnan Rangwala, at marc.dempsey@stonybrook.edu