Stony Brook’s Commercial Licensing and Express IP terms for Applied Research (CLEAR-IP) streamlines the commercialization of SBU developed technology and reduces time to the market and the realization of the resulting economic and societal benefit. CLEAR-IP offers industry partners three distinct licensing options for accessing the intellectual property developed from an applied research project, while reducing lengthy contract negotiations between businesses and the University.
CLEAR-IP Scope and Applicability
Subject to the following limitations, all for-profit company sponsored research agreements and government-funded incoming subcontracts under $1 million in total value:
- Not available for agreements including outgoing subcontracts to other entities.
- Not available for agreements involving clinical, therapeutic, medical device or medical diagnostic projects.
- Certain options may not be available for research awards/subawards from government, nonprofit, or other types of non-profit sponsors, and consortia agreements.
- Excluding cost of shared projects with Innovation centers and programs (e.g., CoE’s, CAT, SPIR), all budgeted costs for the project are paid by Sponsor
- Agreement includes requisite University IDC applicable to the project.
Terms Applicable to all CLEAR-IP Options
- Project Intellectual Property (Project IP) including research results, patents, copyright, software generated under a company sponsored research agreement.
- Commercial rights to the University’s pre-existing background IP are separately negotiated.
- Commercially reasonable due diligence by the company will be used to bring products or processes to market.
- Compliance with federal requirements, including government rights under Bayh-Dole, when federal or government funding is involved.
CLEAR-IP Licensing Options
CLEAR-IP offers industry partners three distinct licensing options for accessing intellectual property developed from applied research projects. These options are designed to streamline the commercialization process and reduce the time spent on contract negotiations, ultimately accelerating the realization of economic and societal benefits from Stony Brook's innovations. The three options are: Traditional, Pre-Paid Commercial Non-Exclusive Royalty Free (NERF) License, and Exclusive Commercial License.
Traditional
- Free non-exclusive research use license for the term of the project.
- Free exclusive 3 month option (from time of IP disclosure) to negotiate a fee-bearing license to commercialize project intellectual property.
- Commercial license terms to be negotiated.
Pre-Paid Commercial Non-Exclusive Royalty Free (NERF) License
- Payment of one-time fixed fee of the greater of $10,000 or 15% of total project budget due at start of the project.
- Field of Use: all fields
- Territory: worldwide
- Includes the right to engage a bona fide business partner of the company for purposes of making or selling products or services for the company sponsor.
- Free exclusive 6-month option to obtain a fee-bearing exclusive license to the University’s rights in project intellectual property.
- License terms are non-negotiable.
Exclusive Commercial License
- Financial Terms:
- Payment of one-time fixed fee of the greater of $15,000 or 20% of total project budget due at start of the project.
- 1% royalty on net sales beginning when sales of products/services exceed $20M total cumulative sales.
- Field of Use: all fields
- Territory: worldwide
- Sublicensable
- Patent Costs: Company will control and bear the expense of preparation, filing, prosecution, and maintenance encompassing the licensed project IP.
- University reserves the right to: (1) use the licensed IP for internal research and educational purposes, (2) to grant other educational and non-profit institutions the right to use licensed project IP for their internal research and educational purposes, and (3) to publish or disseminate information about the licensed project IP.
- Royalty and commercialization reporting (subcontracting federal funds)
- License terms are non-negotiable
Process with Respect to Faculty
Participating faculty must acknowledge and adhere to their responsibilities as Principal Investigators (PIs), including disclosure and IP compliance obligations under CLEAR-IP.