Royalty Distribution Policy

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Category Name: Business & Financial
Responsible Unit: Finance and Mgmt's Research Fdtn. for SUNY
Responsible VP: VP for Administration and Finance
Adoption Date: September 23, 2019
Last Revision Date:
Last Review Date:
Shared governance: none

Policy Statement

Pursuant to the SUNY Patents, Inventions and Copyright Policy (“Patent Policy”) royalties received from the management and licensing of Intellectual Property (as defined in the Patent Policy) are shared with the Creator(s) (as defined in the applicable Patent Policy) and The College.

Purpose/Scope

Consistent with the Patent Policy, The College will reward faculty, staff, and students (as applicable) for the development of Intellectual Property that transforms lives. The purpose of this policy is to provide clarity as to how The College will: 1) distribute the Creator’s share of royalty revenue resulting from the management and licensing of Intellectual Property Policy, and (2) distribute the College’s share of royalties.

Applicability

This policy applies to revenues received from the management and commercialization of Intellectual Property, but does not apply to royalties received from the publication of books, unless the works of authorship are connected solely with the deliverables of a sponsored program. In those instances, please consult with the Contract and Grant Administrator for further guidance.

Definitions

Affiliate - For purposes of this policy, affiliates include The Research Foundation for The State University of New York, all campus auxiliary service corporations and all campus foundations.

Intellectual Property - Patentable inventions, tangible research materials, computer software, and any unique or novel innovations 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, produces of manufacture, product designs, or composition, compositions of matter, materials, and any know-how essential to the practice or enablement of such innovations and improvements, whether or not patentable.

Inventor - Any College at Brockport personnel (faculty, staff or student), who conceived, authored, reduced to practice, designed, developed or otherwise contributed to the conception or creation of intellectual property. Inventor also includes any: a) non-affiliated individual who works with The College at Brockport inventor and assigns the invention to SUNY or The Research Foundation; b) The College at Brockport inventor who later goes to work elsewhere.

Early Career Faculty - Assistant Professor on tenure-track.

Net Royalty - Royalties less reasonable out-of-pocket expenses incurred by The College at Brockport and not reimbursed by licensees for the evaluation, marketing, development, protection, maintenance, and enforcement of the subject intellectual property.

Patentable Invention - Any art or process (way of doing things), machine, manufacture, design or composition of matter, or any new and useful improvement thereof, which may be patentable under the patent laws of the United States or other relevant jurisdiction, and the patent applications or patents that embody them.

Personnel - Any 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.

Royalty - Cash, equity, or other value received by The College at Brockport as consideration for license of rights to The College at Brockport intellectual property.

Royalty Income - Gross royalties paid as proceeds from licensing of intellectual property disclosed.

Students - Individuals enrolled in SUNY, including but not limited to, continuing education, undergraduate, graduate, professional, non-degree, and not-for-credit students.

Technology Transfer Office - The Research Foundation for SUNY at The College at Brockport.

Policy Procedures

 I.  Inventor’s Share

  1. In recognition of interdisciplinary research where there is more than one inventor, each Inventor’s Share is decided among the inventors and documented in an Inventor’s Royalty Sharing Agreement*, drafted after the completion of the New Technology Disclosure form*, which will be used for guidance.  All inventors must sign the agreement.
  2. For Intellectual Property (as defined in SUNY’s Patents and Inventions Policy) disclosed on or after November 23, 2016, there are no restrictions on the assignment or waiver of royalties by an inventor.  Any assignment or waiver of royalties by an inventor must be recorded in written form and duly executed, and attached as an addendum to the Inventor’s Royalty Sharing Agreement.
  3. Inventor royalty payments are made by check or wire transfer directly to the inventor at the address identified in the applicable Inventor’s Royalty Sharing Agreement.  It is the responsibility of the inventor to notify the Technology Transfer Office of an address change.
  4. The inventor will continue to receive their share of royalties regardless of their College at Brockport employment status.  Royalty payments to deceased inventors are forwarded to the inventor’s heir or legal recipient.

*Contact the Contract and Grant Administrator regarding these documents.

II.  Inventor’s Department Share

  1. The Inventor’s Department Share must be used to support scientific research or education or other scholarly activities with emphasis on Early Career faculty and staff.
  2. The Inventor’s Department Share will continue regardless of inventor employment status.
  3. The Inventor’s Department Share remains with the original department when an inventor transfers to another department within the College.
  4. In the case of multiple inventors, the department’s distribution is proportional to the inventors’ shares in the signed Inventor’s Royalty Sharing Agreement.

III.  Inventor’s School Share

  1. The Inventor’s School Share must be used to support scientific research or education or other scholarly activities, with emphasis on Early Career faculty and staff.
  2. The Inventor’s School Share will continue regardless of inventor employment status.
  3. The Inventor’s School Share remains with the original school when an inventor transfers to another school within the College.

IV.  University Share

  1. The University Share is to be used to support scientific research or education and activities related to promoting research, research education or innovation. 

This policy is subject to review and updates in the event of revisions to the SUNY’s Patents, Inventions and Copyright Policy or review by the campus.

Exceptions to this policy may be made in unusual circumstances or in instances where it is in the best interest of the inventor and the campus.

This policy applies to all royalties received from licensing of intellectual property and inventions created in whole or in part by The College at Brockport personnel.  The SUNY Patents, Inventions and Copyright Policy and The Research Foundation for SUNY Distribution of Royalty Income Policy govern disposition of royalties.

All net proceeds realized from the commercialization or other monetization of SUNY intellectual property and invention, after payment of the inventor’s share, 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-Dale Act and its implementing regulations.


Royalty Disposition Structure:

Distribution to Percent of Distribution of Royalty Income from Licensing Intellectual Property or Inventions PRIOR to November 23, 2016 Percent Distribution of Net Royalty from Licensing Intellectual Property Disclosed ON or AFTER November 23, 2016 Requirements
Inventor(s) 40% gross

45% of the first $100,000 of Net Royalty (as defined in the Patent Policy).

 

40% of all remaining net royalty in excess of $100,000.

Distribution checks are made payable to the inventor, unless the inventor directs Research Foundation otherwise in writing.

Inventor’s Dept.

(if applicable)

5% gross 5% of Net Royalty Royalties received by the department must be used to support scientific research or education.

Inventor’s School

(if applicable)

5% gross 5% of Net Royalty Royalties received by the school must be used to support scientific research or education.

 


Responsibility: 

Inventor:
  • Disclose intellectual property to the Technology Transfer Office (The Research Foundation for SUNY at The College at Brockport serves as the Technology Transfer Office for Brockport) as soon as possible and whenever practical before publication, as required under the Patents Policy and in the case of federally funded research in accordance with 37 CR 401 of the Bayh-Dale Act.
  • Work with the Technology Transfer Office and outside patent counsel to make applications for patents; complete assignments and other related documents are required.
  • Sign and return New Technology Disclosure form to the Technology Transfer Office.
  • Provide the Technology Transfer Office with accurate contact and information including a current address.
Department Chairs:
  • Notify the Technology Transfer Office of any agreement to divide the department share different from the Royalty Disposition Structure.
  • Ensure all royalties received by the department are used to support scientific research or education.
Deans and Vice Presidents:
  • Notify the Technology Transfer Office of any agreement to divide the school share differently than the one document in the Royalty Disposition Structure.
  • Ensure all royalties received by the school are used to support scientific research or education. 
Provost:
  • Ensure all royalties received by the College are used to support scientific research or education. 
Technology Transfer Office
  • Conduct all operations necessary to manage, process, protect, license, and report intellectual property.
  • Negotiate licenses to intellectual property rights.
  • Prepare Inventor’s Royalty Sharing Agreement, when applicable.
  • Provide guidance regarding inventor sharing.
  • Maintain inventor contact information, including current address.
  • Administer the distribution of royalties.
  • Distribute royalty payments.
  • Maintain royalty accounts, including creation of new accounts and modifications to existing accounts.

Links to Related Procedures and Information

SUNY Patents, Inventions and Copyright Policy “Patent Policy”

The Research Foundation for SUNY Distribution of Royalty Income Policy

Contact Information

Contract and Grant Administrator

History (in descending order)

Item Date Explanation
Next Review Date 9/23/22 Three year review
Adoption Date 9/23/19 Policy Adopted
Draft Review Date 8/22/19 Draft Policy under 30-day Campus Review

Approval

This policy is approved by:

President's Cabinet

September 23, 2019

Last Updated 10/27/20

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