Establishes principles governing the management of state-owned intellectual property

BILL NUMBER:S994

Title of bill

An act to amend the executive law and the public officers law, in relation to establishing principles governing the management of state-owned intellectual property

Purpose or general idea of bill

This bill would forth principles in the Executive Law governing the management of State-owned intellectual property, and would require patent policies subject to the approval of the Director of the Budget and the comptroller pursuant to the Public Officers Law to also conform to the principles set forth in the Executive Law.

Summary of specific provisions

This bill would set forth in the Executive Law the following principles governing state agency management of State-owned intellectual property (IP) resulting from research conducted in state facilities, by state employees, or with state funds:

* The State should retain a non-exclusive, royalty-free license to use IP for noncommercial purposes;

* The state must be able to take title to IP that is not being commercialized;

If IP is not dedicated to the public domain, efforts should be made to commercialize it in New York State;

When IP that is sold or licensed to private sufficient revenue stream, the State should investment and this return should be higher when not produced in New York; and,

The individual whose research leads to the discovery of a patentable invention should share in any proceeds resulting from the sale of license of invention.

This bill would also amend section 64-a of the Public Officer's Law to require that patent policies subject to approval by the Director of the Budget and the comptroller conform to the principles being Established in the Executive Law.

Justification

The State needs to manage intellectual property resulting from State funded research effectively so that it is best utilized for the benefit of the State and its citizens. There is no overall policy governing the use and management of State-owned IP; rather, the Research Foundation of the State University of New York, and individual State agencies and authorities that conduct research or provide grants of State funds to others to conduct research each set their own policies.

To ensure that the State's citizens benefit from state investments in research and development and that the results of state-funded

research are promptly developed, protected and commercialized, or, where appropriate, made available in the public domain.

New York should establish policies governing the use and management of IP discovered directly or indirectly through the use of State funds.

Prior legislative history

2010 - S.6330 - REFERRED TO INVESTIGATIONS AND GOVERNMENT OPERATIONS

Fiscal implications

None.

Effective date

The act would take effect immediately.