Frequently Asked Questions
General
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.
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.
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.
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:
- Scientific manuscripts & textbook chapters.
- Presentations that are open to non-university personnel (e.g., seminars, conference presentations, grand rounds, thesis defenses)
- Conference abstracts
- Funded grant awards (state and federal)
- Website postings
- Discussions with collaborators or outside entities
- 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).
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.
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.
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.
Through our network we can help steer you in the right direction in creating a successful venture by introducing you to:
FAQ - Inventor Portal
In order to access the portal and submit an NTD, your contact information must be current and only one record of your contact information can exist. Please check your profile on the left-hand side of the portal dashboard. Please update all contact and employment information accordingly. If you create a second profile or duplicate contact information, you will not be able to submit the disclosure.
If you selected Yes to question 1 entitled “Export Control Screening”, your invention disclosure cannot proceed. You will be contacted by the University’s export controls administration and security officer to obtain further information about your NTD before being able to complete the disclosure online.
Yes. You must identify all forms of funding that supported the research leading to your technology.
If federal funding supported your technology, you must select the “United States Government” as the funding source and provide the name of the government agency (e.g., NIH, NCI, NSF, DOE) as well as the complete grant information requested in the “Input Table for Grant Funding Information”. Specifically, the investigator holding the grant award, the grant number, the Research Foundation/SBU project/task/award number.
If non-federal funding supported your technology, you must select the appropriate funding source. For example, industry sponsored research, an Economic Development Center or Program such as CIEES/Energy CAT, the Center for Biotechnology, NYSERDA, Stony Brook Foundation, SUNY start-up funding to your laboratory or “other”.
If no outside funding supported your technology, please select “N/A: No Federal or Non-Federal Funding or other resources.
A Research Reagent Disclosure should be submitted when your technology is a research tool. For example, an antibody, a cell line, mouse model or other material. To complete a Research Reagent disclosure please select “Research Reagent Disclosure” from the drop-down list for the “Type of Disclosure” in the Inventor Portal. When prompted please fill out all of the information in category 6 – “Description of Research Tool” as well as any other pertinent information.
A New Invention Disclosure should be submitted when your technology has commercial applicability beyond that of a research reagent or tool. For example, software, a chemical composition, technology, a new device, a method of treating a patient, or a system. To complete a New Invention Disclosure please select “New Invention Disclosure” from the drop-down list for the “Type of Disclosure” in the Inventor Portal. When prompted please fill out all of the information requested in the portal.