Industrial Liaison Resources for Faculty & Students
NYU’s Industrial Liaison seeks to promote the commercial development of NYU technologies. We work closely with faculty and students to help translate their ideas into innovative products and to file and maintain patents that protect these inventions.
NYU has one of the most generous policies in the country for sharing income with inventors, with the remainder being used to support future research and education.
Resources for Inventors
Our mission is to protect and promote the discoveries and inventions of NYU scientists and inventors. If you conceive of an invention or discovery that may have commercial potential, contact us as soon as possible.
In order to avoid loss of certain patent rights, patent applications must be filed on inventions before public disclosure (this includes publication or presentation to non-NYU individuals). We will work with you to accommodate your publication schedule while filing these patent applications and advise on the consequences of specific public disclosures on patentability.
Confidential Disclosure of Invention
We need certain information to determine your invention’s patentability and commercial potential.
The confidential disclosure includes the following information:
- A summary describing exactly what the invention is. Is it a compound, process, machine, manufacture, composition; a new use for, or an improvement on, a known item or process?
- A description of the benefit or use of the invention. What problem does it solve? What advantage does it have over existing or imminent solutions (cost, convenience, safety, performance)?
- A list of pertinent literature, including patents. If there is no pertinent literature, list the closest known. Copies of all listed literature (called “references” in patent language) should be included, along with a brief explanation of the difference between each reference and the invention, describing the advantages of the invention over the references.
- Other research collaborators and funding sources. If you were collaborating with other scientists (whether from NYU or from other institutions) or if your research project has been funded by an agency, foundation, or another source, or if you used materials obtained under a material transfer agreement, include all details, including a materials registration document, so that we can comply with any obligations to the government or other parties.
- Any pending public disclosures such as presentations or publications.
If you are unsure whether an idea or discovery is appropriate for a patent application, we encourage you to contact us to schedule a meeting to discuss in more detail.
Deciding Whether to File for Patent Protection
In consultation with you, we will evaluate the invention for patentability and marketability to determine whether or not to seek patent protection.
If we decide to proceed with patent protection, we will cover all patenting costs and coordinate the application process with the help of an outside patent attorney. As the inventor(s), you assign rights to NYU and will collectively receive 42.5 percent of any net income resulting from the commercialization of the invention. This is one of the most generous royalty-sharing policies of any university.
The Patenting Process
It is important to know that the patenting process has certain timeframes and windows of opportunity for filing an application. The Leahy-Smith America Invents Act, passed in 2011, moved the United States from a “first-to-invent” to a “first-to-file” system, making the timely filing of patent applications even more important.
The initial patent application may either be a regular application, which will be examined by the U.S. Patent and Trademark Office (USPTO), or a “provisional” patent application, which establishes a filing date for priority purposes and can be supplemented with additional data for up to one year.
A patent application in some ways looks like a manuscript, describing what you have done and teaching others how to use your invention. It also contains claims that describe the scope of your invention, which the patent attorney will draft with your input.
After a regular patent application has been submitted, it may take two to four years for the USPTO to review it. The USPTO may initially reject certain claims as too broad or as obvious in light of prior work. The patent attorney will work with you to respond to these rejections, in some cases amending the claims to gain allowance. Once a patent is issued, it provides protection for 20 years from the date of filing.
Marketing Your Invention
Once a patent application is filed, we will seek commercial partners, which may include existing companies or entrepreneurs and investors that are interested in forming a startup.
Existing companies can offer infrastructure such as marketing channels, sector knowledge, facilities, commercial management, and an existing network, while startups may offer greater commitment to the technology and have the potential to contribute to local economic development.
The startup route also ensures that the entrepreneur’s commitment and energy drive the development of the technology and that changing corporate priorities do not affect the development of the technology.
In some instances, a startup may further develop the technology to demonstrate proof-of-concept, such as developing a prototype or early clinical trials, and then partner with or be acquired by a larger company that has greater resources to take the product to market.
We will work in consultation with you to determine whether working with an existing company or a startup is the best path forward.
Licensing the Technology
After there is agreement between NYU and a commercial partner on a desire to move forward, we will negotiate a license agreement, which grants the company rights to the technology. We look to be flexible in negotiating win–win agreements, which meet the needs of industry while preserving core university values such as the right to publish. Our goal is to negotiate an agreement that provides a fair return to both parties.
Following the license agreement, inventors often have close ongoing collaborations with the company in their efforts to develop their technology. Inventors may be invited to perform research, consult, or serve on scientific advisory boards.