The inventor submits an Invention and New Technology Disclosure Form to OTT, thus creating a record of the invention (descriptive information), the inventor(s) involved, who sponsored the work, and public disclosures and publications. Disclosure Forms can also be obtained by calling OTT at (315) 464-7631.
Your disclosure will be evaluated by the Institutional Patent Committee, which is comprised of researchers, the Assistant Vice President for Industry Relations, the Vice President for Research, and is chaired by Scott Macfarlane, the Director of OTT. The committee will evaluate your work, and choose to either file for patent protection, to not file for patent protection, or to wait until more data on the invention is available. If the committee decides to move forward with the invention, we will begin working with you to discuss the finer points of your work. Due to the high cost of filing for a patent OTT must evaluate all new disclosures in this manner to ensure that the invention can be protected, and is commercially viable.
The filing and prosecution of patent applications are done by outside patent attorney firms. We work closely with the selected firms to make sure the application accurately reflects the scope of the invention. The inventor's cooperation is essential in patent filing and prosecution. The chosen patent attorney will be familiar with the field of the invention, but he/she is unlikely to be an expert at the level of detail that makes the invention novel, useful, and non-obvious. You, the inventor, by providing both written and verbal information, will make an important difference and are indispensable for obtaining meaningful patent protection. The attorney will ask the people named on the disclosure about his/her contribution to the conception of the invention to determine the correct inventors on a particular patent application.
Marketing and License Negotiation
Concurrently with making the patent decision, our office will market and, if successful, begin license negotiations with potential licensees. Companies likely to be interested are approached and are given an opportunity to evaluate the invention (if required, on a confidential basis). Inventor's suggestions of companies to be approached are extremely valuable.
Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention which requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development.
Part of developing a license strategy involves seeking information and feedback on market risk from various sources such as potential licensees and venture capital firms. Confidentiality agreements may be required to protect overseas patent rights if no public disclosure of the invention has occurred.
If a company shows strong interest, a license proposal is prepared. Negotiations follow which may require flexibility and creativity by both parties in order to arrive at a mutually satisfactory agreement. Every license has circumstances that necessitate special considerations. For example, startup companies typically cannot afford large initial payments but are able to compensate with equity in the company and/or payments once products are on the market. Note that only 20-25% of invention disclosures are licensed.
The signing of a License Agreement is the beginning of a long term relationship. The licensee's performance is monitored by the associate for the duration of the license. Most License Agreements require periodic financial or development reports from the licensees.
All royalty payments are collected by OTT. After the conclusion of Upstate's fiscal year (June 30th), cash royalties received are distributed according to the Patents, Inventions and Copyright Policy of the SUNY Board of Trustees, with 40% of royalties disbursed to the inventor or inventors, and 60% of royalties retained by Upstate to support its research and commercialization efforts.
It is often necessary to re-evaluate a licensing relationship to adapt to changed circumstances, or to take into account new situations. Either party can request an amendment to the Agreement at any time during its life.