Patent and Intellectual Property Policy

I. Preamble

The Patent and Intellectual Property Policy of New York Institute of Technology ("NYIT" or the "university") is designed to accomplish the following:

1. Support the goals of NYIT's strategic plan through the promotion, preservation, and encouragement of intellectual property creation and by providing aid to scientific investigation and research;
2. Enhance the reputation of the university as an academic research institution and a member of society by conferring the benefits of scholarship and teaching;
3. Encourage invention, innovation and entrepreneurship by faculty, staff and students;
4. Maximize opportunities to engage in collaborative and/or sponsored research;
5. Develop resources that aid and educate faculty, staff and students related to the patent process and technology transfer.

Additionally, the policy and procedures that follow provide an organizational structure through which inventions and discoveries made in the course of university research may be made available to the public through channels of commerce. Accordingly, this policy:

1. Establishes standards for determining the rights and obligations of the university, as well as creators of intellectual property (e.g., inventors, developers, authors) and their sponsors with respect to inventions, discoveries and works created at the university;
2. Ensures compliance with applicable laws and regulations and enables the university to secure sponsored research funding at all levels of research;
3. Outlines pathways for the university, in its broad discretion and consistent with its overall mission, to encourage, assist and reasonably attempt to provide mutually beneficial rewards to the university and members of the university community who develop and transfer university intellectual property under this policy.

II. Policy Reach and Administration

This policy applies to faculty, staff (including student employees), undergraduate students, graduate students, postdoctoral fellows and nonemployees (including visiting faculty, affiliate and adjunct faculty, industrial personnel, fellows, etc.) who participate in research projects at NYIT.

Intellectual property includes all intellectually-created matter, including without limitation inventions, discoveries, publications and other textual matter, software, audio and video creation, and design or artistic works, any of which may be protectible by patents, copyrights and trademarks.

This policy is administered by the Vice Provost for Research and the Office of Sponsored Programs and Research (OSPAR), in consultation with the Office of the General Counsel (OGC). The Vice Provost for Research may appoint ad hoc committee(s) as needed to provide advice on the implementation of this policy, including, without limitation, decisions regarding patent prosecution and technology transfer. Members of the committee may include representatives of faculty and staff with knowledge, skills and expertise required to make recommendations.

III. Ownership of Intellectual Property

A. Faculty

In accordance with the NYIT-AAUP CBA, NYIT owns all intellectual property 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." 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 in the Royalties section below.

Faculty retain ownership of:

• Intellectual property developed without use of any university resources and without corporate, federal or other external sponsorship; and
• Scholarly books, articles, and other publications (including those in electronic form). Nothing in this policy shall limit or restrict the right of faculty to publish results of their research, subject to reasonable delays to preserve patent or other intellectual property rights.

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 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 NYIT facilities or resources (including but not limited to space, computers, laboratory equipment and supplies), no NYIT-administered funds, and no NYIT 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 NYIT faculty members in the course of consulting, and any assignments of rights to such inventions, must be reported promptly to OSPAR. OSPAR will agree to abide by reasonable confidentiality restrictions for disclosures of inventions and assignments made in the course of consulting.

B. Staff

NYIT owns, as a work for hire, all patents, copyrights and other intellectual property created by staff as part of their assigned duties for the institution. Staff creations made outside of their assigned duties, but done with the substantial use of university resources, will also be owned by NYIT, but Net Royalties will be shared as set forth in the Royalties section below.

C. Students

In general, students own the inventions they create. The student owns all rights to the invention, including the right to obtain patents. The student provides NYIT only the non-exclusive right to use the invention for non-commercial research and educational purposes. The student owns the invention even if:

• The invention is created as part of a New York Tech course, and/or
• The student uses commonly available university facilities such as student shops, libraries, or other general-purpose facilities.

There are certain exceptional circumstances in which a third party or NYIT may have ownership:

• Third Party Ownership: If the invention is created pursuant to a sponsored research agreement, with a government or private sponsor, ownership will be determined by the terms of the sponsored research agreement.
• NYIT Ownership: NYIT will own student inventions in the following circumstances:
  
  1. If the student is employed by NYIT and the invention is created as part of that employment, or
  2. If the student creates the invention using a significant amount of NYIT funding.

Although NYIT will own the invention (and any resulting patents) in these exceptional circumstances, Net Royalties from NYIT's licensing of the invention may be shared with the student Inventor, as set forth in the Royalties section below.

Students own the copyright to coursework that is their own original creation. This includes, without limitation, papers, dissertations, theses, and capstone projects. NYIT does not have ownership, but does have the right to copy and distribute these works for non-commercial, educational purposes. Of course, in some cases there will be other contributors to a work, for example a student group project, or a work which has received a significant faculty contribution. In those cases, there will be shared ownership depending on the relative contributions of the individuals involved.

D. Public Domain

A creator may request that intellectual property be published and made available to the public without restriction on use. The Vice Provost for Research will investigate whether such a request may be fulfilled or whether the intellectual property should be protected in some form. The creator's request will be considered by the university in its broad discretion, and accorded due weight and deference, consistent with the overall objectives of this policy, requirements imposed by law, agreements with research sponsors, and the rights and interests of co-creators.

IV. Procedures

A. Disclosure

The creator of new intellectual property shall disclose in a thorough and timely manner all inventions, discoveries and other works that may belong to the university as described in this policy.

• All inventions should be disclosed to OSPAR using the Invention Disclosure form found on the OSPAR website. The completed Invention Disclosure Form should be submitted to OSPAR at least four months before any planned public disclosure of the invention.
• The creator(s) also have the responsibility to update OSPAR in a timely manner of any developments involving publication, sale or use of which they become aware after the initial disclosure.
• Creators are expected to retain all records and documents that are necessary to the protection of the university's interest in the intellectual property.
• Creators must abide by all commitments made in license, sponsored research and other agreements, and laws related to federally and privately funded research. Sponsored research and other agreements normally create obligations with respect to the reporting of inventions, technical data, and copyrightable works such as software. Inventions or discoveries and copyrightable works developed under federally or privately sponsored research should be promptly disclosed to OSPAR.
• Creators must promptly disclose all potential conflicts of interest in accordance with the university's Conflicts of Interest in Research/Sponsored Programs Policy.

B. Determinations Following Disclosure

Upon receipt of an Invention Disclosure, the Vice Provost for Research, in consultation as he or she determines with others, including the Provost, OGC and/or an ad hoc committee, will make a determination whether the disclosed IP is university property, and if so, if the university will make patent application(s). Factors considered in this determination may include:

• Does the invention qualify as patentable (including, is it sufficiently novel, non-obvious, and not previously disclosed)?
• 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 NYIT patent portfolio?
• Does the invention require U.S. only, or more expensive world, patent protection?

The university 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 university will decide whether to proceed with the full utility patent application(s) or not.

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 this policy, and subject to the applicable provisions of any grants or contracts with third parties, as set forth in this policy.

At any time, if the university 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 Institution's interest in the invention, and the inventor shall then be free to dispose of the invention as the inventor wishes.

OSPAR and OGC will also review copyrightable university intellectual property, including software, disclosed to the university, for potential registration and to help ensure that proper notices are affixed to a work.

V. Royalties

A. Definitions

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 intellectual property, 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.

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.

After recovery of expenses by NYIT as provided above, the remaining royalties will be designated Net Royalties. Net Royalties may be shared with creators/inventors as follows, subject to any terms of applicable grants and contracts with third parties.

B. 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 New York Institute of Technology

As used in this document, the term "inventor" may represent two or more individuals. These individuals will be expected to agree among themselves on the fractional distribution of the "inventor" share of any royalties. A written agreement must be signed by all the individuals involved, and deposited for the record with OSPAR. (Appropriate forms are available from OSPAR.) If no written agreement has been deposited at the time of a distribution of Net Royalties, the Inventors' share of such distribution shall be divided equally among the inventors.

C. Staff

In the case of inventions created by staff not as part of their assigned duties, but with the substantial use of NYIT resources, Net Royalties may be shared with the staff member on a case by case basis as determined by the Provost.

D. Students

In the case of NYIT-owned inventions created by students, Net Royalties may be shared with the student on a case by case basis as determined by the Provost.

VI. Other OSPAR Responsibilities Associated with Intellectual Property

The university recognizes that the research and teaching missions of the university always take precedence. At the same time, the university encourages the development by industry of inventions and technology resulting from university research and seeks to facilitate the transfer of such technology for the use and benefit of the public.

To these ends, OSPAR shall:

• Educate faculty regarding intellectual property and tangible research property;
• Orchestrate support as necessary and desirable to seek protection of intellectual property or facilitate the transfer of intellectual property to public use, to carry out contractual obligations, licenses or other forms of transfer, to defend and protect the interests of the university and creators of the intellectual property against third party claims or unauthorized use, to formalize the sharing of royalties, equity or other income derived from university intellectual property with the creators;
• Report to research sponsors as required by research and licensing agreements, and applicable laws and regulations;
• Return to the creator, in a timely manner, the ownership of intellectual property which the university cannot, or decides not to, patent and/or license;
• Provide a process for resolution of disputes that arise between and among the university, sponsors and creators regarding intellectual property.

The Vice Provost for Research and OSPAR will establish processes for technology transfer to protect university intellectual property rights in order to carry out the university's missions set forth above. Acting within its broad discretion and in good faith, the university will seek to maximize the value of the intellectual property.

To these ends, the university, in consultation with the creator, may:

• Publish or advertise the technology as it deems appropriate;
• Assist in finding a partner for the university or a sponsor for the creator;
• Endeavor to negotiate and manage agreements that are consistent with the intellectual property policy and guidelines;
• As deemed necessary or desirable by OGC, provide support for all technology transfer activities and initiatives and/or prepare legal instruments necessary to realize the technology transfer objective;
• Provide oversight pertaining to any potential conflicts of interest.

Creators are expected to assist with commercial development by providing such assistance as may be necessary throughout the technology transfer process to realize the goals and objectives set forth in this policy.

VII. Basic Guidelines for Interactions Among Companies, Creators and the University

There are basic principles that must be observed in the structuring of interactions among the creator, the university and a company.

1. Publication. Public dissemination of research results must not be compromised. The publication of research results must not be hampered by agreements made to commercialize intellectual property. However, a minimal and defined delay to protect intellectual property through patent applications may be included. It is also the case that creators may be required to observe confidentiality and non-disclosure agreements covering defined company intellectual property. The covered property must be clearly identified in the agreement.
2. Educational Mission. The educational mission of the university must not be compromised. Trainees (students, fellows, associates) must have access to the best guidance and choice of research opportunities that the faculty member can provide. They also must have the ability to publish the results of their research.
3. Scientific Integrity. The scientific integrity of the creator must not be compromised. Any agreement should not compromise or appear to compromise the design, conduct or reporting of research conducted by the creator or the university.
4. Patient Care. Patient care must not be compromised. Patients must receive the best and most appropriate advice and treatment and must also perceive that their care is not compromised by other concerns.
5. Contracts. Agreements must conform with statutes and regulations. The terms of any agreement must conform with applicable laws and regulations, including the tax code to avoid jeopardizing the university's tax-exempt status. The terms of an agreement must not be in conflict with existing licensing or research agreements.
6. Indemnification. Indemnification of the university is needed. A company will normally be required to indemnify the university with respect to general liability, product liability and/or infringement claims related to licensed intellectual property to be used in any product.