New York Institute of Technology Patent Policy
1. Encouragement of Patents
In the course of teaching, research, and other intellectual and administrative activity by faculty, staff, fellows, students, and other individuals in the New York Institute of Technology (NYIT) community, discoveries or inventions both patentable and practical occur. Encouragement of such inventions in appropriate ways is both supportive of the public interest and consistent with the advancement of knowledge for its own sake, the primary purpose of teaching and research in an institution of higher education.
2. Purpose of Patent Policy
The purposes of this Patent Policy are (1) to help assure, in the public interest, that the patentability (or other means of exploitation) and practicality of inventions will be evaluated by qualified persons, and that the income from inventions will be used to support further research or other desirable activities at the university; and (2) to define remuneration to the inventor or inventors (hereinafter the "Inventor") and NYIT as long as the invention generates royalties or other financial remuneration. The Patent Policy states the procedure to be followed in the administration of inventions which result from teaching, research, and other intellectual activity performed under the university's auspices except as further defined in Section 6. This Patent Policy is intended to provide implementation and guidance consistent with the provisions of the AAUP Collective Bargaining Agreement ("CBA"), but in the event of any inconsistency, the provisions of the CBA will prevail.
Historically, patent protection was designed to encourage innovation and the disclosure of the details of new inventions. Patent protection provides an incentive to share ideas with a temporary monopoly on their use. The full invention is disclosed in the publicly available patent application.
In order for an invention to be patented, that invention must meet four requirements:
- The invention must have a useful purpose.
- The invention must meet the legal definition of "novel" or new.
- The invention must be "non-obvious," meaning its use or function cannot be something that is simply the next logical step of an existing invention.
- The invention must not have been "disclosed" to the public prior to the application for the patent. For example, if you have written an article describing the invention before you apply for a patent, the Patent Office may deny the application because you have already disclosed the patent and therefore it is public knowledge.
Patent law prohibits individuals from patenting:
- Laws of nature;
- Physical phenomena;
- Abstract ideas; and
- A mere suggestion of an invention.
3. Ownership of Patents
In accordance with the CBA, NYIT owns all patents resulting from "University Sponsored Research" conducted by faculty, defined as any research activity "supported by the University through special grants, special purchases, or specially reduced teaching load paid for by funds administered by the university regardless of the source of such funds." Note that funds "administered by the university" includes both the university's own funds and grants received from government or private entities. University-sponsored research includes "intellectual property developed with the assistance of specially provided professional or technical assistance (including the assistance of faculty or staff of NYIT), even though this research does not result from a University grant, purchase, or from a reduced teaching load." The sharing of royalties resulting from university-sponsored-research is discussed below.
New York Institute of Technology owns all patents and other intellectual property created by staff as part of their work for the institution.
4. Procedure as to Inventions/Patents and Licensing
- The Provost will establish a Committee on Patents and Licensing appointed from time to time from among members of the faculty and administration. The Provost or his/her designee will chair the Committee on Patents and Licensing. One function of the Committee is to advise on matters of patents policy and administration.
- All inventions by New York Institute of Technology employees (other than personal research of faculty, as defined in the CBA and below) shall be reported promptly in writing to the Provost through the Office of Sponsored Programs and Research (OSPAR), using the Invention Disclosure Form found on the OSPAR web page. The completed Invention Disclosure Form should be submitted to the Director of OSPAR at least four months before any planned public disclosure of the invention.
- The Director of OSPAR, with the advice of the Committee on Patents and Licensing, shall conduct an initial screening followed, when indicated, by a detailed evaluation of the perceived market value of the invention. This may be done through an internal review, or by referral to an external organization that manages the evaluation. The decision to make patent application(s), and the jurisdictions for such applications, will be made by the Committee on Patents and Licensing. The initial decision whether to pursue utility patent application(s) or a provisional patent application will generally be made within 60 days of the Committee's receipt of an Invention Disclosure Form.
The Committee takes into account many different factors when deciding if NYIT will file a patent application. These factors include, but are not limited to:
- Does the invention qualify as patentable (see 2. Purpose of Patent Policy, above)?
- Does the invention have a significant market value?
- Is it likely that the patent will be licensed for commercial exploitation?
- What is the expected lifetime of the patent (until either it is made obsolete or a work-around is discovered)?
- Does the invention "fit" into the New York Institute of Technology patent portfolio?
- Does the invention require U.S. or world patent protection? Patent coverage is made on a country-by-country basis. Therefore, world patent protection is extremely expensive.
The Committee might decide to file a provisional patent application, which holds the priority date for the invention while additional information is obtained about the potential market for the patent. Just before the provisional patent application expires (typically in one year) the Committee will decide whether to proceed with the full utility patent application(s) or not.
- After the evaluation, NYIT may, alone or with the assistance of an external organization, prepare and file utility patent applications or a provisional patent application.
- At the request of OSPAR, the Inventors shall execute assignments or other documents assigning to NYIT all their rights in the invention and any patent applications or resulting patents on the invention. NYIT will retain title to all such patent applications and resulting patents.
- If NYIT decides to participate in the patenting or licensing of an invention, NYIT will have the right to seek to enter into appropriate licensing arrangements to commercialize the invention, subject to the royalty provisions of Section 5, and subject to the applicable provisions of any grants or contracts with third parties, as set forth in Sections 7 and 9.
- At any time, if the Committee on Patents and Licensing decides that NYIT does not wish, and has no legal obligation, to participate in the patenting or licensing of an invention, NYIT may release to the Inventor the university's interest in the invention, and the Inventor shall then be free to dispose of the invention as he or she wishes.
- Definition. For purposes of this policy, "royalties" shall include running royalties, advances against running royalties, up-front license fees, milestone payments, shares of stock or other securities issued by the licensee or another corporation ("equity"), and any other payments received by NYIT under a license agreement in consideration for licensing an invention, but shall not include amounts received from a licensee or others in sponsorship of research or under other agreements for other goods, services or rights.
- Recovery of Expenses. Royalties shall be used first to offset out-of-pocket expenses incurred by NYIT in applying for, obtaining, and defending a patent and in developing and negotiating license agreements during the life of the patent. Expenses for this purpose will include fees paid to outside legal, consulting, and licensing organizations and any other out-of-pocket costs incurred by NYIT. The fees paid to the external individuals or organizations for such services may be of fixed dollar amount or may be in the form of an agreed-upon fraction of the gross royalty income, if any, or in any other form directly associated with commercialization/licensing of the invention.
- Net Royalties. After recovery of expenses by NYIT as provided in subparagraph b above, the remaining royalties will be designated Net Royalties.
- Distribution of Net Royalties in the case of Faculty Inventions. The Net Royalties as defined above in the case of Faculty Inventions shall be divided between the Inventor(s) (as defined under the patent law) and NYIT as follows:
- 50% to the Inventor(s)
- 50% to NYIT
- Overriding Agreements with Third Parties. The foregoing provisions of this paragraph and the rest of this Patent Policy are subject to the terms of applicable grants and contracts with third parties. See Sections 7 and 9.
6. Faculty Inventions Not Under New York Institute of Technology Auspices
"Personal Research," as defined in the CBA, is owned by the faculty member, and NYIT waives any ownership in resulting inventions. The CBA provides: "Personal research shall mean research not related to any university research program and for which the university makes no special contribution of time, facilities, material or monies. The payment of salary and the provisions of a normal academic environment in which to work are not to be considered as giving the university any equity in personal research…"
An invention made by a faculty member in the course of a paid consulting engagement for a company may be assigned to the company only if it is unrelated to the activities for which the faculty member is employed by NYIT and it was not made or conceived under circumstances involving NYIT facilities or personnel. Such an invention will be considered unrelated to the activities for which the faculty member is employed by NYIT if the invention arises directly out of consulting activity paid for by the company, and, for example, it is made in response to a problem posed by the company or is based on nonpublic information provided by the company to the faculty member for use in the consulting engagement. It will be considered not to have involved the use of NYIT facilities if no university facilities or resources (including but not limited to space, computers, laboratory equipment and supplies), no administered funds, and no personnel or students other than the faculty member himself or herself, are involved in the conception or reduction to practice of the invention. All inventions made by faculty members in the course of consulting, and any assignments of rights to such inventions, must be reported promptly to the OSPAR. That Office will agree to abide by reasonable confidentiality restrictions for disclosures of inventions and assignments made in the course of consulting.
7. When Arrangements with Outside Organizations Override This Policy
Arrangements with outside organizations that propose terms which are exceptions to this Policy must be submitted to the President or Provost for review by NYIT with the advice of the Committee on Patents and Licensing. If approved by NYIT, the terms shall be binding upon all members of the faculty, staff, and employees of NYIT such research or utilizing such facilities, and will supersede the provisions of the patent policy to the extent that the terms are inconsistent therewith.
8. Inventions by Staff Resulting from Performance of the Responsibilities of Their Employment
Not infrequently, in the course of carrying out assigned responsibilities of their employment, staff employees may make commercially useful inventions or develop licensable property. NYIT owns all intellectual property of staff-members created in the course of their employment, and except in exceptional cases, NYIT does not share royalty (or other) revenues with the employee. In cases where it appears that the invention or commercially valuable property has not resulted from the performance of the staff employee's assigned duties, the matter will be reviewed by the Committee on Patents and Licensing, and a recommendation will be made to the Provost. In these cases, the division of Net Royalties as specified in paragraph 4(d) of this policy will not apply and the Provost may substitute different provisions after review of the recommendations of the Committee on Patents and Licensing.
9. Governmental Rights in Certain Inventions
Current governmental regulations permit educational institutions to retain rights and title to patentable inventions which result from federally funded experimental, developmental and research work. Retention of rights by NYIT is contingent upon the fulfilling of a number of obligations on the part of NYIT and of the Inventor(s) and these obligations must be discharged in order to protect the interests of all parties. Though the university may retain rights and title to such patentable inventions, the federal government retains a royalty free license and places certain other restrictions upon the ultimate disposition of the patents(s). Details of the implementing regulations may be obtained from the OSPAR. Incumbent upon members of the community who apply for and receive federal funding to support research or who use federal monies in the conduct of their research is the requirement for written agreement that they will promptly disclose patentable inventions to NYIT and will execute all instruments necessary to protect the rights of the government and/or NYIT. Forms for this agreement will be provided to all faculty and will be available for other participants (i.e. collaborators, post-doctoral students, graduate students) from the OSPAR.
10. Student Patent Policy
This Patent Policy is applicable to students as well as faculty and staff. Like faculty and staff, students' creativity is enhanced by their exposure to the resources (both physical and intellectual) of NYIT. The Institution's contribution to that creativity is reflected in the Patent Policy, which provides that inventions will be owned by NYIT rather than by the individual inventor. NYIT will, however, disclaim ownership of student inventors' rights as follows.
A student will be deemed to own his or her invention unless it is created:
- Under a sponsored research or other third-party agreement; or
- Pursuant to contract work or employment with NYIT, or an agreement with NYIT that provides for NYIT ownership; or
- With the significant use of NYIT resources. Significant use NYIT does not include:
- participation in NYIT courses; or
- minimal use of unrestricted NYIT funds; or
- use of commonly available facilities such as student shops, libraries or other general-purpose facilities.
In the case of student-owned inventions, NYIT retains the right to use the invention for non-commercial research and educational purposes.
In the case of NYIT-owned inventions, i.e., those created by a student under any of the conditions 1 through 3 above, Net Royalties from NYIT's licensing of any invention made by a student may be shared with the student Inventor, on terms determined by the Provost following a recommendation from the Committee on Patents and Licensing.
All patentable inventions that may potentially be owned by the university under the Patent Policy, including this Patent Policy for Students, must be disclosed to the OSPAR.
11. Revocation or Amendment
This patent policy is subject to revocation or amendment by NYIT. In case of doubt as to the interpretation of this patent policy, a definitive interpretation will be provided by the President or Provost after receiving the advice of the Committee on Patents and Licensing. This patent policy is effective as to all inventions/discoveries made at NYIT.