1. 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.

2. The Charge

3. 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

4. Current Challenges

5. Challenges and Change

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

7. 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

8. 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

9. 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

10. 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

12. Thank You