Federal sponsors increasingly require in certain proposals the inclusion of a plan for data, resource and research tool sharing and intellectual property management. The language below has been developed to meet this need. If you are submitting a proposal that requires such a plan  please get in touch with Chet Bisbee at least ten days before the submission deadline to arrange for the preparation of a letter for your proposal.

Stony Brook University is committed to the NIH policies pertaining to data sharing and sharing of research tools and resources. Below please find detailed plans that meet the needs of NIH while adhering to the State of New York laws and SUNY policies that govern intellectual property and materials transfer agreements.

General Policy Statement:

The Research Foundation of SUNY is Stony Brook University's agent (by contract executed in 1977) for the management of the University's research enterprise and intellectual properties ("IP") created by university inventors and developers. This management system provides a means for allowing university researchers to publish their results freely while preserving for the university's industrial partners the opportunity to capture market dominance through patents and copyrights to offset the costs and risks of product development. Although the Foundation is constrained by law from selling or assigning its patents and copyrights, it can and does convey such rights via license.

Thus, the Foundation facilitates both the faculty's scholarly job of publishing its findings and the private sector's economic job of making new products available to the public. Certain federal and state laws, including the Bayh-Dole act of 1980, the Patents and Inventions Policy of the State University of New York (Title 8, Subchapter B, Section 335.28 of the NY Compilation of Codes), and the Federal Income Tax Act of 1986 as promulgated in Revenue Procedure 97-14, regulate this particular mission of the Foundation.

The regulations require that inventors (defined in the regulations as any person whose affiliation with SUNY accords that person access to SUNY facilities) who utilize SUNY facilities in making their inventions must assign same solely to the Foundation. The Foundation secures patents and other intellectual property protection for the inventions. The regulations encourage the Foundation to license such rights, and, if the licensee agrees to make definite, diligent efforts to develop and market products based on the technology, the rules permit exclusive licensing. It follows from the diligence requirement that the Foundation prefers to grant licenses to parties whose economic interest in the license lies in the market that the patent or the copyright protects, not merely in the protection from suit that the license conveys.

In order to ensure SUNY’s right to have tax-exempt private activity bonds issued on its behalf by the Dormitory Authority of the State of New York, Foundation is effectively barred from setting specific license terms on inventions that do not exist. Under Revenue Procedure 97-14, only a non-exclusive license for research use internal to licensee’s operations can be granted until the invention is “ready for use.” An option to negotiate in good faith for rights to an invention is the most that Revenue Procedure 97-14 allows the Foundation to grant until the actual invention is in hand to be evaluated on its specific merits.

Although the Foundation wishes to co-operate in securing background rights for its licensees, such rights are not necessarily available. The Foundation at Stony Brook acts solely as the agent of Stony Brook University to fulfill the university’s obligations to a particular inventor under the Patents and Inventions Policy. The Foundation is not authorized to transfer under any one license any of the rights, however closely related to the licensed subject matter, that arise or may arise out of the inventive activities of an unrelated inventor at Stony Brook University or at another SUNY campus.

Because the laws require the Foundation to retain ownership of its patents, only a patent attorney who is able, under the canons of the legal profession, to treat the Foundation as a client can acquire the relevant patent grants from governments.

Since the Foundation is not a participant in any economic market, its sole interest in its patent estate is as a licensor. The Foundation is not in a position to recover its patenting costs through product sales. It must recover all such costs from licensees. Furthermore, since the rules require the Foundation to turn over 100% of all royalties directly to the university, patent cost recovery must be contractually distinguished from royalty payments. Of necessity, the Foundation must recover patent costs on a current basis from parties who acquire any exclusive rights to a patent application (option, license, etc.).

Finally, since the Foundation does not participate in any product markets, it carries no coverage for product liability or patent infringement. It therefore requires licensee to bear all risk and to defend, indemnify and hold harmless Foundation from all claims of a product liability nature. The Foundation does not expose itself to the potential adverse consequences of making warranties or representations regarding challenges to the validity, enforceability or ownership of its patents, the merchantibility of covered products or their susceptibility to accusations of infringement.

IP Management Plan under EDRN:

1. The Foundation relies solely on patent and copyright law to protect its IP. It does not keep trade secrets on its own behalf or on behalf of any third party, including SUNY and its inventors. It may request a delay in making a putative invention accessible to the public (generally not more than 90 days) to allow time to prepare and file a patent application, but will not require a prospective author to delay publication for this purpose.

2. The Foundation will not unreasonably deny to any third party an opportunity to evaluate Foundation’s data, research tools, and putative inventions or to use the concepts underlying such inventions to make improvements, new inventions or discoveries provided that such party first enters into an appropriate confidentiality agreement or materials transfer agreement and, where appropriate, reimburses Foundation for any out-of-pocket expenses it incurs in transferring materials. The party must advise Foundation of the results of any research enabled by the information or materials transferred under such agreement so that Foundation may timely determine whether or not it has any patent rights in such results or other rights that may attend the transfer of Foundation information, materials or derivatives thereof to other parties for commercial purposes.

3. The Foundation will not assert any right it may have under patents it owns against any party whose only use of the invention(s) claimed therein is use for non-commercial research conducted by such party internally.

4. With respect to research tools and data developed with the support of NIH grants, including support under EDRN, Foundation will follow the NIH Research Tools Guidelines and the NIH Final Statement on Sharing Research Data, insofar as such Guidelines and Final Statement do not conflict with obligations Foundation may have under existing contracts, applicable law or an order of a court or other governmental agency.

5. With respect to for-profit and non-profit collaborators in EDRN, the Foundation is prepared to grant to such collaborators (whether or not collaborator provides proprietary materials to Foundation) a time-limited option to negotiate in good faith for an exclusive license (rights reserved for research and for the government), with right of sublicense, to patents or patent applications covering inventions that Foundation develops under EDRN funding, and to materials in which Foundation has or acquires a property interest under EDRN funding. It is understood that the grant of a so-called “all fields” license is contingent on licensee’s ability to exploit the invention in all fields and licensee’s acceptance of appropriate diligence obligations.

6. With respect to for-profit and non-profit collaborators in EDRN whose own rights in intellectual property dominate Foundation’s rights (i.e., the practice of an invention claimed in a Foundation patent or the use of a material in which Foundation has or acquires an ownership interest would infringe on a valid claim of a collaborator), the Foundation is prepared to grant to such collaborator a non-exclusive, royalty-free right, with right of sublicense, to such dominated right until collaborator’s dominant right expires or is declared invalid or unenforceable by a court of competent jurisdiction.

7. Foundation will accept proprietary materials from collaborators under an appropriate Materials Transfer Agreement and will agree therein to grant to the provider a non-exclusive, royalty-free right, with right of sublicense, to any invention Foundation might make as a result of its receipt and use of such materials under EDRN even though collaborator’s own rights in intellectual property do not dominate Foundation’s rights in the invention provided that collaborator can show by competent proof submitted to the Foundation in confidence that collaborator was in rightful possession of the complete and operable idea of the same invention prior the date of Foundation’s conception of such invention.