The objectives of the Patents and inventions policy include: securing research support, identifying inventions, securing appropriate patents, marketing inventions through licensing and other arrangements, and managing royalties and other invention-related income.

1. All inventions made utilizing State University of New York (SUNY) or the Research Foundation of State University of New York (RF) facilities shall belong to the State SUNY or the RF. The SUNY patents and inventions policy has been codified at Title 8, Chapter V, Subchapter B, Section 335.28 of Codes, Rules and Regulations of the State of New York.
2. The RF holds sole title to and ownership of all inventions developed using RF or SUNY facilities resulting from sponsored research or related sponsored research activities.
3. The Inventor(s) and the inventor’s heirs or legatees are entitled to a non-assignable 40 percent of the gross royalties paid by licensee. All net proceeds after payment of the inventor’s share, and other appropriate costs associated with the Research Foundation technology transfer program, are to be used to support SUNY research.
4. If the RF elects not to patent and license an invention, it may be assigned back to the inventor, unless the sponsor requires assignment to the sponsor. If an invention is reassigned to the inventor and the technology is licensed, the Research Foundation may claim 10% of “net” proceeds received by inventor.
5. In a research agreement, the RF may agree to give the sponsor an option to negotiate an exclusive license, the RF cannot grant a sponsor an exclusive license in the research agreement pursuant to the Tax Exempt Bond Act of the Tax Reform Act of 1986. The Sponsor my request, as part of the sponsored research agreement, the option to negotiate an exclusive license to RF inventions made as a result of the agreement. If the Sponsor exercises its options with the RF, the good faith negotiations to reach a license begin during the option period.

Some guiding principles include:

1. The Bayh-Dole Act of 1980, found at Title 35, United States Code, Section 200, provides for the transfer of ownership regarding federally funded research. Where inventions are made at universities pursuant to federally funded research projects, the federal government permits inventions to be owned by universities or their research corporations (the federal government does retain some rights however). The universities are permitted to nonexclusively or exclusively license the “Bayh-Dole” inventions to other parties. Although the federal government rarely uses the right, it does by this law retain “March-in” rights to license the invention to a third party, without the consent of the patent holder or licensee, where it determines the invention is not being made available to the public on a reasonable basis.
2. U.S. patent law provides that ownership of a patent initially resides with the inventors listed on the patent. The law further states that inventorship only includes individuals who have contributed an inventive concept – either an idea or reduction to practice – to a claim of the patent. Funding a research project at the university does not qualify as inventorship (merely a request or payment of services), and furthermore, any sponsored research agreement cannot call for the assignment of inventions in a manner contrary to New York State Law.
3. Ownership of Software is governed by a separate policy, the Software Copyright Policy. The use of SUNY or RF computers may result in the creation of computer software. Computer software can be either copyrighted or patented, depending on the particular circumstances, and can often be licensed for commercial use. Computer software and software support materials must be disclosed promptly to the RF Office of Technology Licensing and Industrial Relations, which functions by formal agreement as the agent of State University of New York for the administration of such materials.
4. Under the Software Copyright Policy, such title will belong to the creator if all of the following conditions exist:

1. The work was not created within the scope of employment of the creator;
2. The work created was not the result of the work for hire situation;
3. The work created was not a product or byproduct of sponsor funded or contracted activity; and
4. The work was not developed through the use of facilities, funds or personnel of the SUNY or the RF or under the control of SUNY or the RF.