S T A T E   O F   N E W   Y O R K
________________________________________________________________________

                                  4878

                       2009-2010 Regular Sessions

                          I N  A S S E M B L Y

                            February 6, 2009
                               ___________

Introduced by M. of A. MORELLE, MAGNARELLI, WEPRIN, DESTITO -- read once
  and referred to the Committee on Governmental Operations

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

  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
it  is in the interest of the state to ensure that the results of state-
funded research are promptly developed and protected and,  where  appro-
priate,  made  available  in the public domain. It is further found that
the people of the state should derive a substantial benefit  from  state
investments in research and development, including: the dissemination of
scientific  discoveries;  improvements in the public health and welfare;
the introduction of new technologies, and the commercialization  of  the
product  of  state-funded  research  that  will lead to job creation and
enhanced state revenues.
  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 and its citizens. It  is  further  found  that  the
intellectual property policies of individual state agencies and authori-
ties should be appropriately formed and upheld in practice to ensure all
participants  in  state-funded  research  and  in  commercialization  of
research discoveries understand their obligations and  responsibilities.
Therefore,  the legislature finds it necessary to enact policies govern-
ing the management of  intellectual  property  resulting  from  research
conducted in state facilities or with state funds.
  S  2.  The executive law is amended by adding a new section 33 to read
as follows:

 EXPLANATION--Matter in ITALICS (underscored) is new; matter in brackets
                      [ ] is old law to be omitted.
                                                           LBD08489-02-9

A. 4878                             2
              

  S 33. PRINCIPLES GOVERNING THE MANAGEMENT OF STATE-OWNED  INTELLECTUAL
PROPERTY. 1. FOR THE PURPOSES OF THIS SECTION, THE FOLLOWING WORDS SHALL
HAVE THE FOLLOWING MEANINGS:
  A.  "STATE  AGENCY"  SHALL  MEAN  ANY STATE DEPARTMENT, BOARD, BUREAU,
DIVISION, COMMISSION, COMMITTEE, PUBLIC AUTHORITY, PUBLIC BENEFIT CORPO-
RATION, COUNCIL, OFFICE,  UNIVERSITY,  COLLEGE,  OR  OTHER  GOVERNMENTAL
ENTITY PERFORMING A GOVERNMENTAL OR PROPRIETARY FUNCTION FOR THE STATE.
  B.  "INTELLECTUAL  PROPERTY"  SHALL  MEAN  INTANGIBLE  ASSETS THAT ARE
SUBJECT TO STATUTORY PROTECTION UNDER APPLICABLE PATENT, COPYRIGHT,  AND
TRADEMARK LAW, INCLUDING PATENTABLE INVENTIONS.
  2.  ANY  STATE  AGENCY POLICY GOVERNING THE MANAGEMENT OF INTELLECTUAL
PROPERTY RESULTING FROM RESEARCH CONDUCTED IN STATE FACILITIES, BY STATE
EMPLOYEES, OR WITH STATE FUNDS SHALL CONFORM TO  THE  FOLLOWING  PRINCI-
PLES:
  A. THE STATE SHALL RETAIN A NON-EXCLUSIVE, ROYALTY-FREE LICENSE TO USE
THE INTELLECTUAL PROPERTY FOR NONCOMMERCIAL PURPOSES;
  B.  IF  A  STATE  AGENCY  DOES  NOT PURSUE COMMERCIALIZATION OR PATENT
RIGHTS WITHIN REASONABLE TIME LIMITS, THE STATE MUST  BE  ABLE  TO  TAKE
TITLE TO THE INVENTION;
  C.  WHEN  INTELLECTUAL PROPERTY IS NOT DEDICATED TO THE PUBLIC DOMAIN,
GOOD FAITH EFFORTS IN DEMONSTRABLE OUTREACH, SUCH AS  ACTIVE  TECHNOLOGY
TRANSFER OFFICES AND OUTREACH TO BUSINESS ASSOCIATIONS AND VENTURE CAPI-
TAL AND ANGEL NETWORKS SHOULD BE MADE TO COMMERCIALIZE THE TECHNOLOGY IN
NEW YORK STATE;
  D. IF INTELLECTUAL PROPERTY IS SOLD OR LICENSED TO PRIVATE BUSINESSES,
AND  A SUFFICIENT REVENUE STREAM IS GENERATED, THE STATE SHALL RECEIVE A
RETURN ON ITS INVESTMENT AND, WHEN  INTELLECTUAL  PROPERTY  IS  SOLD  OR
LICENSED TO PRIVATE BUSINESSES NOT RESIDENT IN NEW YORK STATE, THE STATE
SHALL  OBTAIN  A  HIGHER  RETURN  ON ITS INVESTMENT THAN IT WOULD IF THE
PRODUCT RESULTING FROM THE  INTELLECTUAL  PROPERTY  WERE  COMMERCIALIZED
WITHIN NEW YORK STATE; AND
  E. WHEN RESEARCH IS CONDUCTED DIRECTLY BY A STATE AGENCY, THE INDIVID-
UAL  WHOSE  RESEARCH  LEADS  TO  THE DISCOVERY OF A PATENTABLE INVENTION
SHOULD SHARE IN ANY PROCEEDS RESULTING FROM THE SALE OR LICENSE  OF  THE
INVENTION.
  S  3. Subdivisions 2 and 3 of section 64-a of the public officers law,
as added by chapter 453 of the laws of 1989,  are  amended  to  read  as
follows:
  2.  The  department and agency patent policies in effect on the effec-
tive date of this section shall be continued, PROVIDED THAT THEY CONFORM
TO THE PRINCIPLES SET FORTH IN SECTION  THIRTY-THREE  OF  THE  EXECUTIVE
LAW.    Such  existing  policies, unless promulgated pursuant to article
eight of the education law, shall be subject  to  the  approval  of  the
director of the budget and the state comptroller.
  3.  A state department or agency may, after the effective date of this
section, adopt a patent policy, or  amend  a  patent  policy  previously
approved  by  the director of the budget for such agency, subject to the
approval of the director of the budget, the state  comptroller  and  the
director  of the office of employee relations, PROVIDED THAT SUCH POLICY
CONFORMS TO THE PRINCIPLES SET FORTH  IN  SECTION  THIRTY-THREE  OF  THE
EXECUTIVE  LAW.  Where such policy or amendment affects a term or condi-
tion of employment, such policy or amendment shall be adopted in accord-
ance with the provisions of article fourteen of the civil service law.
  S 4. This act shall take effect immediately.