Patent Protection and Licensing Procedure
- 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.
- 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.
- Patent Protection - All matters related
to patent protection and maintenance will be handled by
IPLG. For questions related to intellectual property,
Dorene Price at 631-344-4153.
- 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.
- 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
- 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