S T A T E   O F   N E W   Y O R K
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                                  6333

                       2009-2010 Regular Sessions

                            I N  S E N A T E

                            December 7, 2009
                               ___________

Introduced  by  Sen.  KLEIN  -- read twice and ordered printed, and when
  printed to be committed to the Committee on Rules

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.
  S  2.  The  public  authorities law is amended by adding a new section
3154-a to read as follows:

 EXPLANATION--Matter in ITALICS (underscored) is new; matter in brackets
                      [ ] is old law to be omitted.
                                                           LBD08415-01-9

              

S. 6333                             2

  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) "ATTORNEY GENERAL" SHALL MEAN THE ATTORNEY GENERAL OF THE STATE OF
NEW YORK.
  (B) "COMPTROLLER" SHALL MEAN THE COMPTROLLER OF THE STATE OF NEW YORK.
  (C) "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.
  (D)  "PATENTED  INVENTIONS"  SHALL  MEAN  THOSE  RIGHTS  REFLECTED  IN
SUBSISTING  PATENTS  ISSUED  BY  ANY  GOVERNMENT,  INCLUDING  THE UNITED
STATES.
  (E) "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 TO BE APPOINTED 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 COMMISSION 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 OUTSTAND-
ING  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 ANY GENERAL, SPECIAL
OR LOCAL 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  APPOINT-
MENT  AS  A  MEMBER  OF  THE ADVISORY 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-

S. 6333                             3

SORY COUNCIL AND SHALL BE CALLED BY HIM OR HER AT  THE  REQUEST  OF  THE
EXECUTIVE DIRECTOR OF THE FOUNDATION.
  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
and  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.