Allocation of Campus Royalties from Patents & Licenses

Rationale

The patent policy of the State University of New York (Central Administration) provides for sharing of gross royalty income from inventions and licensing of inventions between the Inventor and the University. Under this policy, in cases where the University funds the patent application, 40% of all royalties shall be awarded to the Inventor and the remaining 60% going to the University. In those cases where the University does not fund the patent application, 90% goes to the Inventor, and 10% to the University.

The Chancellor has elected to share 40% of the State University portion of net royalties (after costs) with the campus on which the invention(s) was (were) discovered, the remaining portion being absorbed by the Research Foundation. The disposition of these funds is to be determined by the President of the campus. Thus, it is necessary that the SUNY at Albany campus have a policy for the allocation of campus royalties derived from patents and licenses.

Policy

I. This policy deals with the disposition of 24% of the royalties (after costs) of an invention whose patent application has been funded by the University, and 4% of the royalties (after costs) of an invention whose patent application has NOT been funded by the University. Furthermore, this policy statement deals exclusively with the distribution of this local campus allocation, hereafter called SUNY/Albany Royalty Funds.

II. It is in the interest of SUNY at Albany to reward the development of new technology resulting from faculty research efforts by sharing SUNY/Albany Royalty Funds with the Inventor(s) and the Department(s) of origin. Thus, this policy allocates royalties to the Inventor and the Department according to the following arrangement:

A)The most generous share is allocated to the research and scholarly pursuits of the Inventor(s).

B)The Department(s) of the Inventor(s) origin(s) and SUNY/Albany, as a whole, shall share a somewhat lesser amount, in recognition of the atmosphere which led to the relevant discovery.

In recognition of the interdisciplinary stimulation which may lead to discovery, the Department(s) of stimulation may be recognized by the Inventors as a weighted linear combination of Departments in designating appropriate shares. For example, a biochemist whose primary appointment is in the Department of Chemistry may feel that 80% of external stimulation for the Invention came from that department and 20% came from the Department of Biological Sciences, and may thus designate 80% of the Department share to go to Chemistry, and 20% to Biological Sciences. In no case, however, may the Department of primary appointment receive less than 50% of the Department share.

III. The funds allocated to the Department and to the University are to be used in accordance with University policies and procedures in ways that are appropriate to enhance research development activities within the following guidelines.

In recognition of the enormous difficulty involved in the establishment of successful and ongoing research activities, it is stipulated that as much as possible of the Department and University shares shall each be devoted to the furtherance of new research activities, especially of newly arrived Junior faculty (Assistant Professors).

IV. The royalties accrued from an invention shall be allocated according to the following formula:

A) The Inventor(s) will receive in its entirety the first $25,000 of SUNY/Albany Royalty Funds per invention to be used for discretionary research support or other scholarly activity.

1.He/she may not charge any additional personal salary against these funds.

2.These funds are not to be restricted in any fashion, and may be used for any research or scholarly purposes chosen by the Inventor(s).

3.Appropriate adjustments to this amount for inflation or other reasons come under the purview of the continual review of the Royalty Allocation Board.

B) All SUNY/Albany Royalty Funds in excess of $25,000 are to be equally divided between the Inventor(s), the Department(s) of origin and the University. The University funds shall be deposited in a University Research Development account, to be administered by the Vice President for Research and Dean of Graduate Studies, in accordance with the general directives stipulated above.

C) In the case where more than one Inventor and/or more than one Department are recipients, the dollar amounts listed in A) above will apply to the combined shares of all recipients. Distribution among them shall follow a formula predetermined by written agreement among recipients and the Vice President for Research and would be determined by the percentage ownership of the patent stated in the Patent Application by the Co-Inventors.

D) In the event of the inventor leaving SUNY/Albany, disposition of the inventor’s share will be determined by the University President upon review and recommendation of the Royalty Allocation Board.

V. The President shall establish and appoint a Royalty Allocation Board in accordance with the following:

A )The Vice President for Research and Dean of Graduate Studies will chair the board.

B) The Royalty Allocation Board shall have one member from each College or equivalent division within the University. In addition, a College or equivalent division will gain another member for each 20% of total University patents granted to Inventors in that College or equivalent division, after 5 total patents have been granted. One additional member of the Royalty Allocation Board shall come form the Faculty Senate, one from the division of Finance, and one from the student body.

C) The Royalty Allocation Board shall advise the President in the following matters:

1. Guidelines and procedures for the implementation of these policies;

2.Exceptions to these policies in unusual circumstances;

3.Determination of the extent of the University’s interest in inventions; and

4.Such other matters as the President may deem appropriate.

VI. The Royalty Allocation Board shall:

A) Undertake continual review of these policies and advise the President accordingly;

B) Encourage general awareness of and interest concerning patents within the University community; and

C) Maintain current information concerning patent activity within the University and disseminate this information to the faculty of SUNY/Albany.

VII. The Council on Research shall maintain oversight of the Royalty Allocation Board.

A)At timely intervals, the Council shall review the operation of the board and shall report to the University Senate the results of that review.

B)When necessary, the Council shall recommend to the board appropriate changes in the review procedures within the constraints imposed by law and regulation.

Approved by Univ. Senate
December 5, 1983