Bill Text: NJ A4406 | 2014-2015 | Regular Session | Introduced
Bill Title: Establishes technology transfer assistance program in EDA.
Spectrum: Partisan Bill (Republican 1-0)
Status: (Introduced - Dead) 2015-05-11 - Introduced, Referred to Assembly Commerce and Economic Development Committee [A4406 Detail]
Download: New_Jersey-2014-A4406-Introduced.html
Sponsored by:
Assemblywoman CAROLINE CASAGRANDE
District 11 (Monmouth)
SYNOPSIS
Establishes technology transfer assistance program in EDA.
CURRENT VERSION OF TEXT
As introduced.
An Act establishing a technology transfer assistance program in the New Jersey Economic Development Authority and supplementing P.L.1974, c.80 (C.34:1B-1 et seq.).
Be It Enacted by the Senate and General Assembly of the State of New Jersey:
1. As used in P.L. , c. (C. ) (pending before the Legislature as this bill):
"Authority" shall have the same meaning as provided in section 3 of P.L.1974, c.80 (C.34:1B-3).
"County college" means an educational institution established or to be established by one or more counties, offering programs of instruction, extending not more than two years beyond high school, which may include, but not be limited to, specialized or comprehensive curriculums, including college credit transfer courses, terminal courses in the liberal arts and sciences, and technical institute type programs.
"Institution of higher education" shall include a public institution of higher education and a private institution of higher education.
"Private institution of higher education" means an independent college, university, or institute incorporated and located in New Jersey, which by virtue of law, character, or license is a nonprofit educational institution authorized to grant academic degrees and provide a level of education which is equivalent to the education provided by the State's public institutions of higher education as attested by the receipt of and continuation of regional accreditation by the Middle States Association of Colleges and Schools, and which is eligible to receive State aid under the provisions of the Constitution of the United States and the Constitution of the State of New Jersey, but does not include any educational institution dedicated primarily to the education or training of ministers, priests, rabbis, or other professional persons in the field of religion.
"Public institution of higher education" means Rutgers, The State University of New Jersey, the New Jersey Institute of Technology, Rowan University, a State college, a county college, and any other New Jersey public university or college established or authorized by law.
"State college" means any of the State colleges or universities established pursuant to chapter 64 of Title 18A of the New Jersey Statutes including any State college designated as a teaching university.
"Technology business" means a
corporation, partnership, limited liability company, or sole proprietorship
that is engaged in the design, development, and introduction of new technology,
including, but not limited to, biotechnology, information technology,
re-manufacturing, advanced materials, processing
engineering or electronic technology products, or innovative manufacturing
processes.
2. The New Jersey Economic Development Authority, in consultation with the Business Action Center created in the Department of State and an institution of higher education, shall establish, pursuant to the provisions of P.L. , c. (C. ) (pending before the Legislature as this bill), a technology transfer assistance program to: a. facilitate the dissemination of technology developed through State-funded academic programs and State-subsidized technology businesses; b. provide assistance to private technology businesses in transferring technology to commercial applications; and c. conduct a patentability assessment and evaluation of existing products to determine the marketability of the technology or intellectual property.
3. a. A person or business may apply to the authority for assistance with the transfer of technology from the development stage to licensing for practical application, including licensing for patentable inventions, software, and other forms of intellectual property. The authority may elect to contract with an institution of higher education or with another qualified entity having an existing technology transfer program to perform a portion or all of the duties provided for in subsection b. of this section. If the authority so elects, it may designate an institution of higher education to act on behalf of the authority, and that designation shall be made on the basis of competitive proposals and shall be based on the institution of higher education's comparative experience, effectiveness, and efficiency with respect to its existing technology transfer operations.
b. (1) The authority or the institution of higher education designated pursuant to subsection a. of this section, shall conduct a patentability assessment and evaluation of existing products to determine the marketability of the technology or intellectual property. If the authority determines that the technology can be protected by patent, the authority shall conduct, or contract with another entity to conduct, a market assessment, including an estimate of market size and an assessment of potential licensees, as well as collecting other pertinent market and industry data. The authority shall gather detailed information on potential licensees and an assessment of the potential licensees' product lines, production, marketing capabilities, if applicable, and financial status.
(2) Upon the completion of the assessment authorized pursuant to paragraph (1) of this subsection, a patent strategy shall be developed, which may include designating a technology business or other entity which the authority will assist in seeking patent protection. An agreement may be made for outside legal counsel to obtain patent protection, including the filing of the necessary forms, applications, and documents.
(3) Upon obtaining a patent, the authority may provide assistance in conducting a marketing campaign, including the development of a strategy for obtaining patent protection and the production of patent marketing materials. A technology business interested in obtaining a license agreement shall sign a confidentiality agreement before confidential information regarding the patent is submitted for evaluation by the technology business. The authority may provide assistance in negotiating a license agreement that provides details on how the technology or other subject of the patent will ultimately reach the marketplace. A license agreement shall include terms relating to initial licensing and other fees, patent costs, royalties, license maintenance, and a definition of the property rights conferred in the agreement.
(4) The authority may provide a referral to the applicant for an agent to continue to manage the relationship between the applicant and a licensee after a license agreement is executed; this may include monitoring the license, collecting fees, royalties and reimbursable expenses, and the maintenance of records of patent expenses and revenues.
(5) The authority or the institution of higher education designated pursuant to subsection b. of this section, may assess the applicant for the actual cost of the patenting, licensing, or license management process, or upon agreement by both the applicant and the authority, may assume partial ownership of the license in lieu of the fee assessment. In the case of technology or intellectual property funded by grants or by persons who are employees of the State or any public entities and who developed the technology in the course of their employment, the authority may elect to take a percentage ownership in the technology or other subject of the patent, the income from which shall accrue to the authority.
4. This act shall take effect immediately.
STATEMENT
This bill requires the New Jersey Economic Development Authority (authority) to establish a technology transfer assistance program to facilitate the dissemination of technology developed through State-funded academic programs and State-subsidized technology businesses, and provide assistance to private technology businesses in transferring technology to commercial applications.
The bill allows the authority to elect to contract with a New Jersey institution of higher education or with another qualified entity having an existing technology transfer program to perform a portion or all of the duties in administering the program. The authority may designate the institution of higher education to act on behalf of the authority, and that designation shall be made on the basis of competitive proposals and shall be based on the institution of higher education's comparative experience, effectiveness, and efficiency with respect to its existing technology transfer operations.
The bill requires the authority or the institution of higher education, as part of the technology transfer assistance program, to conduct a patentability assessment and evaluation of existing products to determine the marketability of the technology or intellectual property. If the authority or institution of higher education determines that the technology can be protected by patent, the authority is to conduct, or contract with another entity to conduct, a market assessment, including an estimate of market size and an assessment of potential licensees, as well as collecting other pertinent market and industry data. The authority is to gather detailed information on potential licensees and an assessment of the potential licensees' product lines, production, marketing capabilities, if applicable, and financial status. Upon the completion of the assessment, a patent strategy is to be developed, which may include designating technology businesses or other entities in which the authority is to assist in seeking patent protection.
