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Patent Protection and Licensing Procedure

  1. TCP Staff Assignment - Invention Disclosures received by Intellectual Property Legal Group (IPLG) will be given a BNL number, and assigned to a specific TCP staff member for commercial assessment.  Henceforth, the assigned staff member will be responsible for all commercialization actions relating to the docket.
  2. Assessment - The TCP staff member assigned to the docket will meet with the inventor(s). Together they will discuss the invention and make a preliminary evaluation of potential applications and possible markets.  Based on commercial assessment and a preliminary novelty determination, the TCP staff will make a recommendation to the IPLG whether to patent the invention.  The TCP's decision and relevant documents will be circulated to the department chairs for their review and concurrence with TCP's decision.
  3. Patent Protection - All matters related to patent protection and maintenance will be handled by IPLG. For questions related to intellectual property, please contact Dorene Price at 631-344-4153.
  4. Marketing and License Negotiation - Companies likely to be interested will be approached and given an opportunity to evaluate the invention (if required, on a confidential basis). The inventor's suggestions of companies to be approached are extremely valuable. If a company is interested and wants to obtain a license, a license proposal will be prepared.  IPLG will review the legal issues related to the agreement.   Every license has circumstances that need special consideration.  Negotiations will follow in order to arrive at a mutually satisfactory agreement.  We strive to put a fair and balanced agreement is place.
  5. Monitoring Licensee Progress - The licensee's performance will be monitored by TCP staff for the duration of the license. Most, if not all, License Agreements will require periodic financial or development reports from the licensees.  Technical and commercial diligence requirements form the centerpiece of most License Agreements.
  6. Royalty Sharing - All royalty payments will be collected by TCP.  After recovering all the patenting and licensing costs for an invention, and payment of any co-owner or co-license share due, the net licensing income will be shared once a year between the inventors identified on the patent and BNL.  The institutional share will be used for education, research and development.
    More information on royalty sharing.

For additional information about what to expect as an inventor working with TCP, please contact the TCP member with whom you normally work or Poorni Upadhya at 631-344-3035.