Date Established: 9/1/2009
Date Last Updated: 4/25/2018
Office of the Provost
The University at Buffalo uses a uniform structure to distribute proceeds realized from the commercialization of UB intellectual property.
The University at Buffalo (UB) encourages innovation by its faculty, staff, and students. When those innovations are licensed and generate royalty for UB, that royalty is shared with those who made the innovation.
|Distribution To||Percent Distribution of Royalty Income From Licensing Intellectual Property Disclosed Prior to November 23, 2016 ||Percent Distribution of Net Royalty From Licensing Intellectual Property Disclosed On or After November 23, 2016||Requirements|
|Inventor(s)|| || ||Distribution checks are made payable to the inventor, unless the inventor directs UB otherwise in writing|
|Inventor's Department(s)|| || ||Royalty received by the department must be used to support scientific research or education|
|Inventor's School(s)|| || ||Royalty received by the school must be used to support scientific research or education|
|University Support of Research|| || ||Royalty must be used to support scientific research or education|
In accordance with the State University of New York (SUNY) Patents, Inventions and Copyright Policy, a certain percentage of royalty is shared with the inventors.
The SUNY Patents, Inventions and Copyright Policy requires that
All net proceeds realized from the commercialization or other monetization of SUNY intellectual property, after payment of the inventor’s share (as defined in subpart (e,) Royalty Income of the SUNY Patents, Inventions and Copyright Policy), and other appropriate costs associated with the evaluation, marketing, development, protection, maintenance, or enforcement of intellectual property shall be used for the support of SUNY research programs in a manner consistent with the Bayh-Dole Act and its implementing regulations.
The Bayh-Dole Act further states that such balance after payment to inventors and expenses “will be utilized for the support of scientific research or education.”
On November 23, 2016, SUNY published its Patents, Inventions and Copyright Policy superseding SUNY’s former Patents and Invention Policy that had been in place at SUNY for more than thirty years. Both policies require that royalty be shared with inventors. However, different royalty distribution percentages apply depending on the date the intellectual property is disclosed and the amount of royalty that is received.
The policy applies to all royalty received from licensing of intellectual property created in whole or in part by UB personnel. The SUNY Patents, Inventions and Copyright Policy and the Research Foundation for SUNY Distribution of Royalty Income Policy govern UB royalty distribution.
For purposes of this policy, affiliates include The Research Foundation for The State University of New York, State University Construction Fund, all campus auxiliary service corporations, and all campus foundations.
Patentable inventions, tangible research materials, computer software, and any unique or novel innovation in the technical arts or any new and useful improvements thereof, including methods or processes for creating an object or result (a way of doing or making things), machines, devices, products of manufacture, product designs, or composition, mask works or layout designs for printed circuit boards or integrated circuits, compositions of matter, materials, any variety of plant, and any know-how essential to the practice or enablement of such innovations and improvements, whether or not patentable.
Any UB personnel who conceived, authored, reduced to practice, designed, developed, or otherwise contributed to the conception or creation of intellectual property. Inventor also includes any:
• Non-affiliated individual who works with a UB inventor and assigns the invention to SUNY or The Research Foundation
• UB inventor who later goes to work elsewhere (e.g., company, other institution).
Inventor does not include a joint inventor employed by a company.
Royalty less reasonable out-of-pocket expenses incurred by UB and not reimbursed by licensees for the evaluation, marketing, development, protection, maintenance, and enforcement of the subject intellectual property.
Any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States or other relevant jurisdiction, and the patent applications or patents that embody them.
All full-time and part-time employees of SUNY and SUNY affiliates, student employees (including, but not limited to, research assistants, teaching assistants, fellows, post-doctoral scholars, and students providing services under sponsor agreements), and other persons holding any paid appointment or position with SUNY.
Cash, equity, or other value received by UB as consideration for license of rights to UB intellectual property.
Gross royalty paid as proceeds from the licensing of intellectual property disclosed prior to November 23, 2016.
Individuals enrolled in SUNY, including but not limited to, continuing education, undergraduate, graduate, professional, non-degree, and not-for-credit students.
|April 2018||Full review. Updated the policy to be consistent with the SUNY Patents, Inventions and Copyright Policy which has an effective date of November 23, 2016. |
Prior to November 23, 2016, royalty income was distributed as follows:
Inventor's Department(s): 5%
Inventor's School(s): 5%
University Support of Research: 50%
Royalty income is gross royalty paid as proceeds from licensing intellectual property disclosed prior to November 23, 2016.
On or after November 23, 2016, net royalty is distributed as follows:
Inventor(s): 45% of the first $100,000 of net royalty; 40% of all remaining net royalty (in excess of $100,000)
Inventor's Department(s): 5%
Inventor's School(s): 5%
University Support of Research: 45% of the first $100,000 of net royalty; 50% of all remaining net royalty (in excess of $100,000)
Net royalty is royalty (cash, equity, or other value received by UB as consideration for license of rights to UB intellectual property) less reasonable out-of-pocket expenses incurred by UB and not reimbursed by licensees for the evaluation, marketing, development, protection, maintenance, and enforcement of the subject intellectual property.