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 IPP are available here.

• 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 IPP?
  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 IPP 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?
  Once sufficient research & development has taken place to fully describe an invention, a New Technology Disclosure should be submitted through the inventor portal. The disclosure should be submitted at a minimum of 6-8 weeks to any academic publication or sharing with parties outside the university. If that is not possible, please contact the Intellectual Property Partners office prior to sharing or disclosing the invention.
• WHAT CONSTITUTES A "PUBLICATION" WITHIN THE CONTEXT OF A PUBLIC DISCLOSURE AS STATED ON SECTION 3 OF THE NEW INVENTION DISCLOSURE FORM AND SECTION 10 ON THE RESEARCH REAGENT DISCLOSURE FORM?

  Any disclosure of a technology that is not subject to a confidentiality or non-disclosure agreement, which includes routine academic activities, including but not limited to: 

  1. Scientific manuscripts & textbook chapters.

  2. Presentations that are open to non-university personnel (e.g., seminars, conference presentations, grand rounds, thesis defenses)

  3. Conference abstracts 

  4. Funded grant awards (state and federal) 

  5. Website postings

  6. Discussions with collaborators or outside entities 

  7. Poster presentations

  Please contact Intellectual Property Partners (IPP) at sbu_ntd@stonybrook.edu if you are uncertain on what constitutes a publication or if you plan to publish the technology prior to submitting a New Technology Disclosure (NTD)
  
  

• 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.  IPP 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 IPP 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 IPP 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, IPP will manage the process of patent or copyright protection, and begin the processes of marketing and licensing.  IPP 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 IPP 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, IPP licensing staff shall make a decision on filing a patent application within six (6) months of receipt of a disclosure.
• CAN I REQUEST IPP 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 IPP 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 IPP 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?
  The IPP will help connect you to the appropriate individuals to establish your company, generate a business plan, and raise money for your new venture.  Once the company is established, we will work with the management team of the new company to negotiate a license or option to the technology.
• WHAT IS THE GENERAL PROCESS OF STARTING A COMPANY AROUND AN SBU INNOVATION?

  The process of starting a company begins with disclosing the technology to the IPP. The team at the IPP will review the technology to determine if the invention is patentable, identify potential products or services based on the technology and determine the market for the technology.  In considering whether the technology is suitable for a startup, we review the commercialization path of the technology, the nature of the technology (eg, platform, disruptive, etc), and interests of the inventor(s).  We share these results with you and if it is determined that a startup is the most suitable path to commercialization, we will work with you to help connect you to the appropriate individuals to establish the company and begin to write a development plan and financing strategy for the company.  It is preferable for the faculty inventor to be partnered with an experienced entrepreneur from the particular industry space who can oversee day-to-day operations of the company, help write the development plan and raise money for the company.  An experienced entrepreneur is not always available at the stage the company is founded, so in the beginning an attorney or other affiliate of the new company can represent the company during license negotiations.

  Once the company is established, the IPP will engage the new company to enter into good faith negotiations for an option, term sheet or license agreement to enable the company to raise money, proceed with R&D and move the product or service to the market place. The IPP is flexible with the types of deals structures for startups and we are willing to work within the reasonable requirements of the startup in terms of timeframes and what is required by the startup to secure financing.  Although we are open to other types of transactions, we typically enter into an option agreement with the startup which enables the startup to secure rights to the technology, and evaluate the technology, and raise money.   Options agreements may license terms, which can help in attracting investors.   

• WHAT ROLE DOES THE IPP PLAY IN THE PROCESS OF STARTING A COMPANY?

  The IPP will help connect you to the appropriate individuals to establish your company, generate a business plan, and raise money for your new venture.  Once the company is established, we will work with the management team of the new company to negotiate a license or option to the technology.

   

• HOW CAN THE IPP HELP ME START MY COMPANY?

  Through our network we can help steer you in the right direction in creating a successful venture by introducing you to:

  • Business mentors and entrepreneurs
  • Legal and accounting services
  • Incubator facilities
  • Potential investors and industry partners
  • Resources for navigating conflict of interest policies
  • Resources for Business planning, market assessment & pitch preparation

   

• 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 IPP to market the invention through the IPP website and other web-based technology marketing services.