for CUNY Community



Technology Transfer @ CUNY

CUNY protects its intellectual property in different ways, mostly using the laws patents, copyrights, and trademarks. The effort of specifying an innovation during the patenting process (by filing a patent application) creates a concrete means for then transferring that innovation to a commercial entity. But in other cases, the mere creation of a work product, like a software program, textbook or other creative work, is immediately protected under copyright law even without any government filing, and this also then can be transferred to a commercial partner. This transfer to a commercial partner is done under license agreement, the terms of which refer to the specified IP. This license agreement then is the contractual basis by which CUNY is compensated for use of the licensed CUNY IP.



TCO Presentations



Basics of Intellectual Property

Click HERE to access presentations by Bryce Pilz, a Law Professor at the University of Michigan. These short videos are designed to guide entrepreneurs through the important concepts of intellectual property during their startup and cover over 60 topics, including patents, copyrights, trademarks and trade secrets.



CUNY Intellectual Property Policy

The CUNY Intellectual Property Policy <pdf> governs intellectual property issues for the entire CUNY Community. It establishes rights and procedures and answers important questions, like "who owns what" and "who shares in royalty income"?

The CUNY IP Policy applies to CUNY faculty, staff, and students engaged in faculty-directed research, who create intellectual property (1) while making substantial use of CUNY resources, (2) as a direct result of CUNY duties, (3) pursuant to the terms of an agreement to which CUNY is a party, or (4) in the course of or related to activities on grants or contracts administered by the RF.

The General Rule is that copyrightable works are owned by their creator(s) and patentable works are owned by CUNY. In some cases, patentable works like computer programs and computer code that may also be copyrightable will be owned by CUNY, either (i) only to the extent that they are patentable or (ii) under certain exceptions and clarifications of the General Rule genrally relating to sponsored work, work created within the scope of employment, work commissioned by CUNY, and CUNY media.

Courses designed to be delivered over the internet, by computer or through similar technologies may involve both copyrightable works and other intellectual property. CUNY claims no ownership rights in either the intellectual content of such courses, or the tools and technologies used to present them, unless the work is the result of sponsored research or is commissioned by CUNY, in which case the terms of a negotiated agreement will apply.

The IP Policy grants Creators 50% of net proceeds from CUNY-owned IP, thereby making the Creator and CUNY equal partners in the overall royalty stream from CUNY-owned IP. In addition, 25% of CUNY's share is distributed to the Creator's College, with 50% of such amount going to the Creator's academic or research units(s) for the support of research and scholarly activity.



TCO Forms



FAQ

  1. What is IP?
  2. I have an invention, what next?
  3. TCO filed patent, what next?
  4. Should I publish or patent first?
  5. Would submitting a NTD withhold or delay publication?
  6. I want to start a company. Can TCO help?
  7. A company is interested in my work. How do I protect my IP when I talk to them?



1. What is IP?

The term "Intellectual Property" refers to a category of law that covers property rights relating to intangible things, implementations of ideas, various creations, works of art, etc. These things can be owned and legally protected against outside use or implementation without the owner's consent. For our purposes, generally speaking, CUNY intellectual property (IP) is protected under the constructs of patents, copyrights and trademarks laws, either nationally or internationally.

The concept of IP relates to the fact that certain products of human intellect should be afforded the same protective rights that apply to physical property. Most developed economies have legal measures in place to protect both forms of property.

Companies are wise to be diligent when it comes to identifying and protecting IP because it holds such high value in today's increasingly knowledge-based economy. Extracting value from intellectual property and preventing others from deriving value from it is an important aspect of building corporate wealth. Many forms of IP cannot be listed on the balance sheet as assets, but the value of such property tends to be reflected in the price of the stock. Management's ability to manage these opportunities effectively and to turn profits is an important determinant of a successful technology enterprise.



2. I have an invention, what next?

If you have an invention that has potential to be translated into a commercial product or process, we would love to hear from you. Please complete a New Technology Disclosure (NTD) form <doc> and send it to us by email or by mail. One of our associates will contact you to discuss your invention, protection of the invention and commercialization strategy.



3. TCO filed patent, what next?

Once TCO has filed a patent, the inventors are expected to assist TCO in its efforts to market the invention. Usually, TCO makes contact with the industrial partners that the inventors specify. However, successful commercialization of any technology requires active participation by the inventors.



4. Should I publish or patent first?

One should file a patent as soon as possible. Most countries in the word are "absolute novelty" countries. Once published, your own publication could be cited against your patent application. Hence, it is advisable to file a patent application before publishing the invention.



5. Would submitting a NTD withhold or delay publication?

We understand the importance and urgency of scientific publication. TCO is committed to avoid delays to publications.



6. I want to start a company. Can TCO help?

For any technology based start-up company, the most valuable asset is its Intellectual Property. TCO can help inventors protect their IP and for those who want to start a company, we can help you define your business model and coach you through drafting of a business/marketing plan. We can help you build a cogent presentation and can introduce you to angel investors or venture capitalists, and can even coach you through your presentations. CUNY also has some business incubator space which may be available.



7. A company is interested in my work. How do I protect my IP when I talk to them?

An inventor must be careful while discussing ideas with commercial companies. You should try to discuss only the matter that is already published and is in public domain. If you have to discuss the proprietary information, you should ask the company to sign a Non-Disclosure Agreement. TCO shall assist you to execute a Non-Disclosure Agreement.

Technology Commercialization Office
555 W. 57th Street, Suite 1407
New York, NY 10019
Tel: 646-758-7922
Fax: 646-758-7907
Email: INFO.TCO@mail.cuny.edu


Useful Links

United States Patent and Trademarks Office
www.uspto.gov

Association of University Technology Managers
www.autm.org

European Patent Office
www.espacenet.org