Understanding SUNY’s New Patents and Inventions Policy RF Learning Tuesday September 27, 2016 Learning Objectives: Participants will: -Learn about the new SUNY Patents and Inventions Policy; -Be walked through the technology transfer lifecycle; -Be prepared for typical activities and challenges you may face when you begin the commercialization process; and,  -Have the opportunity to ask questions of the presenters.

The Charge

SUNY Patents and Inventions Policy Board Catherine Hoselton Assistant Vice President for Sponsored Programs RF Operations Manager Human Protections Administrator SUNY New Paltz Alexander N. Cartwright, Board Chair SUNY Provost Executive Vice Chancellor State University of New York Michael Liehr Executive Vice President Innovation and Technology SUNY Polytechnic Institute Serge Luryi Distinguished Professor Chair of Electrical and Computer Engineering Stony Brook University Richard Burke Professor Chairman of Engineering Maritime College Daniel Vaughn External Technology Collaborations Manager Corning Incorporated Mark Stewart Vice Dean for Research College of Medicine Downstate Medical Center Steven Wood Assistant Director Innovation and Partnerships The Research Foundation for SUNY Elise Rosen Puzio, Board Secretary Assistant Counsel Patents and Inventions Policy Board Secretary State University of New York So in 2011, to kickstart the modernization of SUNY’s policy, Chancellor Zimpher charged SUNY’s Patents and Inventions Policy Board to overhaul SUNY’s innovation policies, including the patent policy and conflict of interest policy. The goal of the Board was to promote innovation among our researchers and students, resolve any ambiguities that might chill innovation at SUNY, enable better relations with industry, and otherwise bringing our archaic IP policy into the 21st Century. After 18 months of meetings and deliberation, in November 2013 SUNY’s PIPB issued a set of recommendations to achieve a strong policy framework that provides clarity to the faculty and administrative staff who participate in SUNY’s innovation ecosystem. Very diverse and expert body that heard issues form all ove rthe system Jeffrey Dunbar Director, UB Technology Incubator Director, Science, Technology Transfer and Economic Outreach University at Buffalo Fernando Gomez Baquero Chief Executive Officer BESSTECH LLC

Current Challenges

Challenges and Change

Challenges and Change Ownership of Intellectual Property AMBIGUITY Ownership of Intellectual Property Scope of employment Substantial vs. Insubstantial Use of University Resources

Challenges and Change Promote student innovation and entrepreneurship Carve out for student ownership of IP Students may choose to work with the university Disclosure of extra-institutional inventions One-page disclosure Waiver process for university to disclaim ownership Timing of title elections

Challenges and Change Research materials that may not be patentable Income related to intellectual property that may not be patentable Distribution of income determined locally Restrictions on use of income derived from federal funds

Challenges and Change Current policy distributes income to inventors from the university’s gross recovery. 40% to inventors. Incentives are not aligned – especially in litigation – leading ot financial strain on the campuse. Restrictions on assignment Royalty distribution Inventors will receive 45% of first $100K net and 40% net thereafter

Challenges and Change Remove barriers to contracting with industry Major barrier to forming industry partnerships Remove barriers to contracting with industry Maximum flexibility in contracting with partners Business judgments made locally

Thank You