Creates the office of intellectual property asset management which authorizes an appointed chairperson to head an advisory council to establish policy; defines terms; requires reports to the governor and legislature.
Law Section: Public Authorities Law
Law: Add S3154-a, Pub Auth L
Co-sponsor(s): KRUEGERCommittee: COMMERCE, ECONOMIC DEVELOPMENT AND SMALL BUSINESS
Law Section: Public Authorities Law
Law: Add S3154-a, Pub Auth L
- Jan 4, 2012: REFERRED TO COMMERCE, ECONOMIC DEVELOPMENT AND SMALL BUSINESS
- Jan 5, 2011: REFERRED TO COMMERCE, ECONOMIC DEVELOPMENT AND SMALL BUSINESS
BILL NUMBER:S996 TITLE OF BILL: An act to amend the public authorities law, in relation to creating the intellectual property asset management advisory council; and providing for the repeal of such provisions upon expiration thereof PURPOSE OR GENERAL IDEA OF BILL: This bill would create an Intellectual Property Asset Management Advisory Council within the New York State Foundation for Science, Technology and Innovation. SUMMARY OF SPECIFIC PROVISIONS: Section 1 provides for the legislative intent and findings. Section 2 amends the public authorities law by adding a new section 3154-a: * Creates an eleven-member Intellectual Property Asset Management Advisory Council, consisting of: the Commissioner of the Department of Economic Development, the Chairman of the New York State Energy Research and Development Authority, a trustee of the State University of New York, a trustee of the City University of New York, a member of the Governing Board of the Commission on Independent Colleges and Universities, and seven public members, with three appointed by the Governor, and two each appointed by the Temporary President of the Senate and the Speaker of the Assembly. The seven public members must have relevant knowledge and experience. * Requires the Advisory Council to submit a report to the Foundation Board within two years recommending how the State should treat State owned intellectual property created under State contracts, grants, and agreements. * Based on the recommendations of the Advisory Council, the board must submit a report to the Governor, Speaker of the Assembly, and Temporary President of the Senate providing guidance on issues relating to intellectual property. Section 3 contains a repealer to go into effect 120 days after the Foundation submits its report to the Governor and Legislature. JUSTIFICATION: State-funded research grants represent an investment of public resources. Consequently, the State needs to manage its rights to intellectual property derived from these investments so that the intellectual property is best utilized for the benefit of the State and its taxpayers, as well as the private sector. The intellectual property rights acquired by the State as a result of State-funded research represent a great opportunity to return social and economic value to New York citizens. The dissemination, application, and utilization of the intellectual property can play a significant role in the development of new consumer and industrial products and in the enhancement of the productivity and competitiveness of businesses involved in the production of existing products. This bill would establish an advisory council to develop recommendations to the Governor and the Legislature on how to organize and manage the cataloging, marketing, licensing, and legal protection of all intellectual property rights of the State. PRIOR LEGISLATIVE HISTORY: 2010 - S.6333 COMMITTED TO COMMERCE - A.4729 Referred to Ways and Means FISCAL IMPLICATIONS: None. EFFECTIVE DATE: 120 days after enactment.
S T A T E O F N E W Y O R K ________________________________________________________________________ 996 2011-2012 Regular Sessions I N SENATE (PREFILED) January 5, 2011 ___________ Introduced by Sens. KLEIN, KRUEGER -- read twice and ordered printed, and when printed to be committed to the Committee on Commerce, Econom- ic Development and Small Business AN ACT to amend the public authorities law, in relation to creating the intellectual property asset management advisory council; and providing for the repeal of such provisions upon expiration thereof THE PEOPLE OF THE STATE OF NEW YORK, REPRESENTED IN SENATE AND ASSEM- BLY, DO ENACT AS FOLLOWS:
Section 1. Legislative intent. The legislature finds and declares that the intellectual property generated by state-funded research represents a great opportunity to return social and economic value to the New York taxpayer in return for public investment in research. It is further found and declared that the public interest in research outcomes needs to be protected both by the state and by the beneficiaries of such awards, including research bodies who are the grant recipients. It is further found and declared that the dissemination, application and utilization of the results of research grants can play a significant role in the development of new consumer and industrial products, of new industrial processes, and in the enhancement of the productivity and competitiveness of business involved in the production of existing products. The legislature further finds that the state needs to manage its intellectual property effectively so that it is best utilized for the benefit of the state, the taxpayers, and the private sector. It is further found and declared that state agency and public authority poli- cies should be appropriately formed and upheld in practice to ensure all participants in research and in commercialization of research discover- ies understand their obligations and responsibilities. Therefore, the legislature hereby declares the creation of the New York state intellec- tual property asset management advisory council. EXPLANATION--Matter in ITALICS (underscored) is new; matter in brackets [ ] is old law to be omitted. LBD04990-01-1 S. 996 2 S 2. The public authorities law is amended by adding a new section 3154-a to read as follows:
S 3154-A. INTELLECTUAL PROPERTY ASSET MANAGEMENT ADVISORY COUNCIL. 1. DEFINITIONS. AS USED IN THIS SECTION, THE FOLLOWING TERMS SHALL HAVE THE FOLLOWING MEANINGS UNLESS OTHERWISE SPECIFIED:
(A) "PATENTABLE INVENTIONS" SHALL MEAN INVENTIONS THAT FALL WITHIN THE SCOPE OF PATENTABLE SUBJECT MATTER UNDER THE LAWS OF THE UNITED STATES BUT ARE NOT YET THE SUBJECT OF AN ISSUED PATENT. (B) "PATENTED INVENTIONS" SHALL MEAN THOSE RIGHTS REFLECTED IN SUBSISTING PATENTS ISSUED BY ANY GOVERNMENT, INCLUDING THE UNITED STATES. (C) "STATE-OWNED INTELLECTUAL PROPERTY RIGHTS" SHALL MEAN ANY AND ALL INTELLECTUAL PROPERTY THAT IS OWNED BY THE STATE, INCLUDING ALL TRADE- MARKS AND SERVICE MARKS, COLLECTIVE MARKS AND CERTIFICATION MARKS, ALL COPYRIGHTS, ALL TRADE SECRETS, ALL PATENTABLE INVENTIONS, AND ALL PATENTED INVENTIONS. 2. THERE IS HEREBY CREATED THE INTELLECTUAL PROPERTY ASSET MANAGEMENT ADVISORY COUNCIL TO DEVELOP RECOMMENDATIONS TO THE BOARD ON HOW THE STATE SHOULD TREAT STATE-OWNED INTELLECTUAL PROPERTY CREATED UNDER STATE CONTRACTS, GRANTS AND AGREEMENTS. THE ADVISORY COUNCIL SHALL CONSIST OF ELEVEN MEMBERS AS FOLLOWS: ONE SHALL BE THE COMMISSIONER OF ECONOMIC DEVELOPMENT; ONE SHALL BE THE PRESIDENT OF THE NEW YORK STATE ENERGY RESEARCH AND DEVELOPMENT AUTHORITY; ONE SHALL BE A TRUSTEE OF THE STATE UNIVERSITY OF NEW YORK; ONE SHALL BE A TRUSTEE OF THE CITY UNIVERSITY OF NEW YORK; ONE SHALL BE A MEMBER OF THE BOARD OF GOVERNORS OF THE COMMIS- SION ON INDEPENDENT COLLEGES AND UNIVERSITIES; AND SEVEN SHALL BE MEMBERS OF THE PUBLIC WITH THREE APPOINTED BY THE GOVERNOR WITH THE ADVICE AND CONSENT OF THE SENATE, WITH TWO APPOINTED BY THE SPEAKER OF THE ASSEMBLY, AND WITH TWO APPOINTED BY THE TEMPORARY PRESIDENT OF THE SENATE. THE SEVEN PUBLIC MEMBERS SHALL BE INDIVIDUALS WITH OUTSTANDING KNOWLEDGE AND LEADERSHIP IN ONE OF THE FOLLOWING FIELDS: HIGH-RISK VENTURE INVESTMENTS IN NEW SCIENTIFIC OR TECHNOLOGICAL BUSINESSES OR NEW SCIENTIFIC OR TECHNOLOGICAL PRODUCT DEVELOPMENT; PROFESSIONAL AND BUSI- NESS SERVICES WITH MORE THAN TEN YEARS OF EXPERIENCE IN THE LICENSING OF INTELLECTUAL PROPERTY; PATENT, TRADEMARK, COPYRIGHT, AND TRADE SECRETS LAW OF THE UNITED STATES; INTERNATIONAL PATENT LAW INCLUDING PATENT COOPERATION TREATIES; OR UNIVERSITY TECHNOLOGY TRANSFER AND COMMERCIALI- ZATION. THE GOVERNOR SHALL APPOINT A CHAIRPERSON FROM AMONG THE MEMBERS OF THE ADVISORY COUNCIL. 3. ALL MEMBERS OF THE ADVISORY COUNCIL SHALL SERVE FOR A TWO-YEAR TERM OR UNTIL SUCH TIME AS THE ADVISORY COUNCIL HAS COMPLETED ITS RECOM- MENDATIONS TO THE BOARD. 4. THE MEMBERS OF THE ADVISORY COUNCIL SHALL RECEIVE NO COMPENSATION FOR THEIR SERVICES, BUT SHALL BE REIMBURSED FOR THE ACTUAL AND NECESSARY EXPENSES INCURRED BY THEM IN THE PERFORMANCE OF THEIR DUTIES UNDER THIS ARTICLE. 5. NOTWITHSTANDING ANY INCONSISTENT PROVISION OF LAW, ORDINANCE, RESOLUTION OR CHARTER, NO OFFICER, MEMBER OR EMPLOYEE OF THE STATE OR OF ANY PUBLIC CORPORATION SHALL FORFEIT HIS OR HER OFFICE OR EMPLOYMENT BY REASON OF HIS OR HER ACCEPTANCE OF APPOINTMENT AS A MEMBER OF THE ADVI- SORY COUNCIL, NOR SHALL SERVICE ON SUCH ADVISORY COUNCIL BE DEEMED INCOMPATIBLE OR IN CONFLICT WITH SUCH OFFICE OR EMPLOYMENT. 6. THE ADVISORY COUNCIL SHALL MEET REGULARLY AND AT LEAST FOUR TIMES PER YEAR. SPECIAL MEETINGS MAY BE CALLED BY THE CHAIRPERSON OF THE ADVI- SORY COUNCIL AND SHALL BE CALLED BY HIM OR HER AT THE REQUEST OF THE EXECUTIVE DIRECTOR OF THE FOUNDATION. S. 996 3 7. THE ADVISORY COUNCIL SHALL SUBMIT ITS RECOMMENDATIONS IN WRITING TO THE BOARD WITHIN TWO YEARS AFTER THE FIRST MEETING OF ALL ELEVEN MEMBERS. THE ADVISORY COUNCIL'S RECOMMENDATIONS SHALL INCLUDE, BUT NOT BE LIMITED TO, THE FOLLOWING:
(A) WHETHER ALL, NONE OR SOME OF THE RIGHTS ARISING OUT OF THE CREATION OF INTELLECTUAL PROPERTY SHOULD BE DEDICATED TO THE PUBLIC DOMAIN. (B) HOW THE STATE SHOULD MAXIMIZE THE PROTECTION OF INTELLECTUAL PROP- ERTY THAT IT OWNS. (C) HOW STATE EMPLOYEES AND OFFICIALS SHOULD BE MADE AWARE OF THE OBLIGATIONS, RESTRICTIONS, REQUIREMENTS AND OPPORTUNITIES REGARDING THE PROTECTION AND MANAGEMENT OF STATE-OWNED INTELLECTUAL PROPERTY. (D) HOW STATE EMPLOYEES AND OFFICIALS SHOULD BE INFORMED ON DISCLOSURE AND WHETHER A UNIFORM SYSTEM OF DISCLOSURE SHOULD BE DEVELOPED AND IMPLEMENTED. (E) WHAT ACTIONS ARE BEING TAKEN BY STATE AGENCIES, AUTHORITIES, DEPARTMENTS, BOARDS AND COMMISSIONS TO MANAGE STATE-OWNED INTELLECTUAL PROPERTY. (F) HOW OWNERSHIP RIGHTS SHOULD BE DETERMINED WHEN INTELLECTUAL PROP- ERTY IS CREATED BY STATE EMPLOYEES IN THE COURSE OF THEIR STATE EMPLOY- MENT. 8. BASED ON THE RECOMMENDATIONS OF THE ADVISORY COUNCIL, THE BOARD SHALL SUBMIT A REPORT TO THE GOVERNOR, THE SPEAKER OF THE ASSEMBLY AND THE TEMPORARY PRESIDENT OF THE SENATE PROVIDING GUIDANCE ON HOW TO:
(A) PROMOTE THE UTILIZATION OF INTELLECTUAL PROPERTY ARISING FROM STATE-SUPPORTED CONTRACTS, GRANTS AND AGREEMENTS. (B) ENCOURAGE MAXIMUM PARTICIPATION OF SMALL-BUSINESS FIRMS IN LICENS- ING STATE-OWNED INTELLECTUAL PROPERTY. (C) PROMOTE COLLABORATION BETWEEN COMMERCIAL CONCERNS AND STATE ENTI- TIES IN COMMERCIALIZING STATE-OWNED INTELLECTUAL PROPERTY. (D) ENSURE THAT THERE ARE MECHANISMS IN PLACE THAT ALLOW THE STATE TO OBTAIN CERTAIN MINIMAL RIGHTS IN STATE-SUPPORTED INTELLECTUAL PROPERTY TO MEET THE NEEDS OF THE STATE AND PROTECT THE PUBLIC AGAINST NONUSE OR UNREASONABLE USE OF SUCH INTELLECTUAL PROPERTY. S 3. This act shall take effect on the one hundred twentieth day after it shall have become a law; provided, however, that effective immediate- ly, the addition, amendment and/or repeal of any rule or regulation necessary for the implementation of this act on its effective date are authorized and directed to be made and completed on or before such date; provided, further, that this act shall remain in effect until one hundred twenty days after the New York state foundation for science, technology and innovation board submits the report required by subdivi- sion 8 of section 3154-a of the public authorities law to the governor, the temporary president of the senate and the speaker of the assembly, at which time this act shall expire and be deemed repealed and; provided, further, that the New York state foundation for science, tech- nology and innovation board shall notify the legislative bill drafting commission upon the submission of the report required by subdivision 8 of section 3154-a of the public authorities law in order that the commission may maintain an accurate and timely effective data base of the official text of the laws of the state of New York in furtherance of effectuating the provisions of section 44 of the legislative law and section 70-b of the public officers law.