Hospital Affiliation and Intellectual Property Ownership

Hospital Affiliation and Intellectual Property Ownership

UB sometimes receives disclosures from inventors working at the university's various affiliated hospitals. It results in questions about ownership of intellectual property with respect to the nature of the inventor’s employment and facilities used in making the invention. Sometimes we see similar questions in establishing sponsored research contracts, including clinical trial agreements.

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The following guidelines are used in determining intellectual property ownership with respect to research conducted in affiliated hospitals. Note that this process applies to all hospital affiliations except for the VA Medical Center, which has a separate agreement. We have shared relevant sections of the Kaleida contract to illustrate the contract language used to determine or define ownership.

Intellectual Property Ownership Determination

1. Does the inventor(s) have a UB faculty appointment?

a) YES, proceed to 2

b) NO - proceed to 4 

2. What is the nature of the UB appointment?

a) Full-Time Faculty (FTF) (1.0 FTE), or Part-Time Faculty (less than 1.0 FTE), proceed to 3

b) Geographic Full Time (GFT) faculty, proceed to 3

c) Volunteer faculty, then volunteer owns

    i) unless conducted at UB or a UB-leased facility, or by prior agreement with UB to the contrary – then proceed to 3 

3. Was the research conducted as part of the faculty member’s professional obligation to conduct University research?

a) YES, proceed to 4

b) if NO, faculty must provide proof (see i-iv below) satisfactory to UB that research was not conducted under the faculty member’s research obligation Page 1

    i) adequate proof (including but not limited to time and place verification) must document dissociation from University or University-leased facilities and professional responsibilities

    ii) if funding to support the research was from a non-UB source and not managed by UB, then this must be documented

    iii) UB credentials must not have been used in obtaining support for or performing the research

    iv) Would the research have been permitted if the researcher did not have a UB faculty appointment?

        A) If the answer to iv is NO – then proceed to 4

        B) If i-iii can be documented, then Researcher owns 

4. Were Hospital facilities that are under a UB lease used in making the invention?

NOTE 1: Facilities leased solely by a practice plan corporation is not a University leased facility.

NOTE 2: Contact Suzanne Laychock for University-leased facilities under SUNY contracts for research.

a) YES, then UB owns

b) NO, proceed to 5, except:

    i) would the hospital space be available to the researcher if the researcher did not have a UB faculty appointment?

        A) NO – then UB owns

        B) YES – then proceed to 5 

5. Was the research associated with the invention sponsored by UB (e.g. research funding was managed by the Research Foundation, UB Foundation, or State; or, privately funded or unfunded research)?

a) YES, UB owns

b) No, Researcher owns 

Relevant Portions of Kaleida Contract

B. Role of Faculty Members.

All research undertaken by Faculty Members utilizing the University-leased space at KALEIDA shall be considered University sponsored research. All sponsored programs and other funding associated with such research shall be processed through either UB Foundation Services, Inc., acting on behalf of the Research Foundation of State University of New York (Research Foundation), or through the Research Foundation. 

H. Intellectual Property Rights.

All intellectual property rights associated with research conducted at KALEIDA shall accrue to the party sponsoring such research, except for rights arising out of research conducted within the University’s leased space, in which case all rights accrue to the University. KALEIDA acknowledges and agrees that the University’s policies (including, but not limited to, the regulations set forth in 8 NYCRR Section 335.28, as amended from time to time) shall govern the extent to which the University or its Faculty Members have any intellectual property rights or financial interest in University-sponsored research conducted at KALEIDA. Except as otherwise set forth herein, the parties agree that the economic benefit derived from research and technology development activities jointly sponsored by KALEIDA and the University shall be shared according to the pro rata share of each institution’s investment. The University agrees that no part of any facility of KALEIDA shall be considered “university facilities” for purposes of SUNY Patent Policy unless the specific portion of such facility in question is, as of the time the invention is discovered, leased by the University for its exclusive use. The parties further agree that any research grants, contract agreement or patents that are initiated by KALEIDA or its related entities which are not University-sponsored (including, by not limited to, pharmaceutical contracts, community service grants, demonstration projects and joint ventures with entities other than SUNY) shall be administered by KALEIDA and shall not be governed by the Agreement. The terms “SUNY Patent Policy” shall mean the policy set forth in 8 N.Y.C.R.R. Section 335.28, or any successor policy.