Frequently Asked Questions
Stony Brook University is a major source of new technology. Over $170 million in research funding at the University generates substantial numbers of new technology disclosures each year. Stony Brook is among the top universities in the country creating new inventions, discoveries, devices and processes, licensing over 25% of its technologies to industry. The Policies which govern the OTLIR are available here.
What is Intellectual Property (IP)?
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.
Who owns the Intellectual Property discovered or created at the University?
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.
How do I know if I have made a Patentable Invention?
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.
Do I have to disclose my Invention to OLTIR?
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.
What is an ideal time for disclosing the invention?
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.
What happens once I have disclosed my Invention?
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.
How long does it take for OTLIR to decide whether it will file a patent on my invention or not?
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.
Can I request OTLIR to release my technology disclosures back to me, if it decides not to file a patent and commercialize it?
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.
What if I want to start a company to develop my inventions?
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.
How is the Marketing done?
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.