Louisiana Tech University

Intellectual Property Policy

August 27, 1999 On the motion of Mr. Duhe’, seconded by Mrs. Burkhalter the Board of Supervisors for the University of Louisiana System approved Louisiana Tech University’s Intellectual Property Policy subject to any revision that may be necessary in the future in order that the policy conform to the System-wide or Board policy once adopted (Agenda Item F.2.-Other Business).

June 2, 2000 Linda Law Clark, Attorney, DeCuir & Clark, L.L.P., representing the Board of Supervisors for the University of Louisiana System, in a letter to Dr. Daniel Reneau, President, Louisiana Tech University, expresses an legal opinion that the Louisiana Tech University Intellectual Property policy "meets all legal requirements and appears to purport with the policy established by the Board".

June 7, 2000 Carroll J. Falcon, Vice President for Academic Affairs, University of Louisiana System, in a memorandum to Dr. Daniel Reneau, President, Louisiana Tech University, stating "The Intellectual Property policy of Louisiana Tech University that was approved by the Board of Supervisors at its August 27, 1999 meeting has been recently reviewed by the Board’s legal counsel. It was examined in light of the policy recently adopted by the Board (October 29, 1999). It is the opinion of counsel that the Louisiana Tech Intellectual Property Policy meets all legal requirements of the Board policy at this time."

Louisiana Tech University recognizes that research and scholarship should be encouraged without regard to potential gain from licensing fees, royalties, or other such income; however, the University also recognizes that patentable inventions and discoveries may arise from faculty, staff, and student research. The policies governing the administration of such inventions should provide adequate recognition and incentive to inventors and at the same time ensure that the University will share in the rights pertaining to inventions in which it has an equity. Any incomes accruing to the University shall be used in the furtherance of the University’s academic mission, e.g., instruction, research, and public service. Decisions as to the disbursement of such funds shall take into account recommendations by the Intellectual Property Committee.

This policy is intended to support faculty, staff, and students in identifying and protecting intellectual property, defining the rights and responsibilities of all involved, administering intellectual property matters, and establishing support offices to provide the required assistance. It also stipulates how income generated should be distributed to the creators or developers and to the University.

The basic objectives of the University’s Intellectual Property Policy are

1. To maintain Louisiana Tech University’s policy of encouraging research and scholarship as creative academic endeavors while recognizing that commercially valuable inventions may result from such endeavors;
2. To delineate procedures to encourage inventors to report discoveries with broad commercial potential and to assist them, while at the same time safeguarding the interests of all concerned parties;
3. To make intellectual property developed in the course of University research available to the public under conditions that will promote its effective utilization and development;
4. To ensure that intellectual property developed in the course of University research shall not be used to the detriment of the public interest by the unnecessary exclusion of any qualified user or by any other means;
5. To provide adequate recognition and incentives to inventors through shares in any proceeds from their inventions, since—unlike common commercial practices— University charges and salary scale are not based on the expectation of income from inventions by the University;

6. To advance and encourage research and other academic activities within the University with monies accruing to the University from its equity in inventions developed in the course of research supported by funds or utilizing facilities administered by the University, or in other inventions which are handled through the University;
7. To recognize the equity of any outside sponsor by allowing reasonable and equitable provisions for the granting of intellectual property rights to the sponsor, consistent with the University’s basic objectives outlined above and subject to the University’s’s need to maintain the tax exempt status of financing used for certain University facilities.

"Biological Material" is defined as any organism, or substances produced by or derived from any organism.

"Intellectual Property" shall be defined as inventions, discoveries, know-how, show-how, processes, unique materials, copyrightable works, original data, and other creative or artistic works which have value. Intellectual property includes that which is protectable by statute or legislation, such as patents, copyrights, trademarks, service marks, trade secrets, mask works, and plant variety protection certificates. It also includes the physical embodiments of intellectual effort, for example, models, machines, devices, designs, apparatus, instrumentation, circuits, computer programs and visualizations, biological materials, chemicals, other compositions of matter, plants, and records of research.

"Mask Work" means a series of related images, however fixed or encoded: (i) having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (ii) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.

"Novel Plant Variety" means a novel variety of an asexually reproduced plant.

"Patentable Materials" shall be deemed to refer to items other than software which reasonably appear to qualify for protection under the patent laws of the United States or other protective statutes, including Novel Plant Varieties and Patentable Plants, whether patentable thereunder.

"Patentable Plant" means an asexually reproduced distinct and new variety of plant.

"Software" shall include one or more computer programs existing in any form, or any associated operational procedures, manuals, or other documentation, whether protectable or protected by patent or copyright. The term "computer program" shall mean a set of instructions or statements of related data that, in actual or modified form, is capable of causing a computer or computer system to perform specified functions.

"Trademarks" shall include all trademarks, service marks, trade names, seals, symbols, designs slogans, or logotypes developed by or associated with Louisiana Tech University and associated with other intellectual property.

"Trade Secrets" means information including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers which (i) derives economic value, actual or potential, from not being generally known to and not being readily ascertainable by proper means by other persons, who can obtain economic value from its disclosure or use; and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

"Traditional Academic Copyrightable Works" shall be defined as a subset of copyrightable works created independently and at the creator’s initiative for traditional academic purposes. Examples include class notes; books, theses and dissertations; educational software (also known as courseware or lessonware); articles; non-fiction, fiction, and poems; musical works, dramatic works including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; or other works of artistic imagination that are not created as an institutional initiative.

"University Personnel" is defined as all faculty, administrators, staff, and students who are subject to this policy.

For the purposes of this policy, intellectual property is divided into two categories, Technical Works and Academic Works.

Technical Works include intellectual properties that are generally of a scientific, engineering, or technical nature such as patentable or unpatentable inventions, devices, machines, processes, methods, and compositions (including biological materials); computer software; and University collections.

Academic Works include all intellectual properties not covered in Technical Works that are of an artistic, scholarly, instructional, or entertainment nature. Academic works do not include those productions of drama, music, athletics, and similar events that are managed by appropriate academic departments, colleges, or academic support units, and are expressly approved by the University as not being subject to this policy. Traditional academic publications, such as professional papers published in scholarly journals, are not included, except under specific and unusual circumstances. Likewise, the juried artistic creations or performances that are the academic, noncommercial equivalent of such scholarly publications are not included.

Louisiana Tech University personnel are regularly involved in scholarly activities which include teaching, research, and other creative activities. While the primary focus of such efforts is the advancement of the central purposes of the University, the products of scholarship often have implications for wider and differing applications. These intellectual properties thus may be of benefit to the individuals involved and to the University.

The rights of Louisiana Tech University in intellectual property arising from research will vary depending on the proportionate contribution of the institution to the performance of the research projects or on the type of contract agreed upon with cooperating agencies. Research projects can vary from those wholly financed by the University or by a University-administered fund to projects which receive no significant University support. Louisiana Tech University shall not assert ownership of intellectual property unrelated to job responsibilities and where only incidental use of institution resources usually and customarily provided has occurred, nor does the University have ownership of traditional academic copyrightable works. Joint ownership may occur under certain circumstances such as when scholarly works involve the services of other institution employees (e.g., development of multi-media courseware).

1. Louisiana Tech University will have ownership rights in all intellectual property created by University personnel that is conceived and first actually or constructively reduced to practice as a part of or as a direct result of (a) University research; (b) activities within the scope of the inventor’s employment by, or in official association with, the University; or (c) activities involving the use of University information not available to the public, or funds administered by the University.
2. To the extent that intellectual property is conceived, developed, and reduced to practice by a member of niversity personnel on his/her own time, outside the scope of his/her employment or association with the University and without University facilities, materials, or resources, ownership of such intellectual property shall belong to the creator(s). He/She may submit his/her invention to the University for possible patenting and/or commercial exploitation and management under terms to be agreed upon by the creator(s) and the University.
3. The provisions of this policy are subject to any applicable laws, regulations, or specific provisions of the grants or contracts which govern the rights in intellectual property created in connection with sponsored research.
4. In order to avoid any questions concerning the tax exempt status of financing used for certain University facilities, Louisiana Tech University shall seek to

1. retain ownership of inventions arising during performance of research sponsored by any private sponsor at Louisiana Tech University and/or government sponsor and;

1. grant to such sponsor(s) any right in the invention only under compensation terms that are set after the time when the invention comes into existence and that are at a fair market level of compensation to Louisiana Tech. Under the terms of certain contracts and agreements between Louisiana Tech and various agencies of government, private and public corporations, and private interests, Louisiana Tech may be required to license intellectual property rights to the contracting party. Louisiana Tech retains the right to enter into such agreements whenever such action is considered to be both in its best interest and in the public interest. The University will not agree to grant any rights in future inventions to private corporations or businesses unless such provision is included in the contract that sponsored the work leading to the invention.

5. Special cases not covered by the above statements or which arise because of conflict of interest shall be considered by the Intellectual Property Committee and an appropriate recommendation submitted to the University administration.

1. Royalty Income is defined to include income associated with licensing and commercialization of any intellectual property owned by the University, and includes such monies received as royalties, fees, advanced payments, court-awarded infringement damages, payments received in settlement of infringement disputes, and the like. Net Royalty Income is calculated after the costs of exploiting the subject intellectual property have been reimbursed to the University if the University retains ownership of the intellectual property. Some examples of such costs are the cost of securing patents, appropriate licenses, and other efforts as required. Royalty income shall not include indirect economic benefits resulting from the technological position estimated by the patented technology or the sale of derived articles or concepts, including such items as a follow-on NSF grant that uses the patented technology as a basis for future work.
2. Net royalty income on intellectual property owned by the University shall be divided into an Inventor’s Share, a University Share, the Inventor’s Home College’s Share, and Discretionary Funds.

1. The Inventor’s Share is the portion of net royalty income paid directly to the inventor(s) as a group for his/her/their personal income. The determination of who is an "inventor" shall be made in accordance with the patent laws of the United States. When licensed intellectual property generating royalty income is not patented, determination of "inventorship" will be made on a case-by-case basis by the Louisiana Tech and will be subject to the review and approval of the Intellectual Property Committee in the event of a lack of consensus on this issue.

1. The Inventor’s Home College’s Share is the portion of net royalty income payable to the home college(s) of the inventor(s) as a group.

1. The University Share is the portion of net royalty income paid to the University.

1. Discretionary Funds is the portion of net royalty income paid to the home college(s) of the inventor(s) for the inventor’s use as discretionary scholarship/research support.

1. The percentage allocations of the various shares of intellectual property income shall be calculated as follows: Inventor’s Share shall be 40%; Inventor’s Home College’s Share shall be 15%; University Share shall be 45%.

4. College/Department/Unit priorities are as follows:

1. The Inventor’s Share will be shared equally among all inventors, unless he/she/they agree otherwise.
2. Inventor(s) may also arrange for his/her/their personal share(s) to be retained by the University, e.g., to support his/her/their research.
3. The Inventor’s Share will continue even though he/she/they may have left the University.
4. When an inventor leaves the University, the discretionary funds are added to the University Share.

5. When none of the inventors has a home college, the Inventor’s Home College’s Share and/or Discretionary Funds are added to the University Share.
6. Inventor’s shares shall pass to the Inventor’s heirs and assigns in the event of the inventor’s death.

Intellectual property activities shall be under the general cognizance of Louisiana Tech University. The Intellectual Property Committee shall function as an advisory committee in the University and shall have the following responsibilities:

The Committee shall be appointed by the President. Committee appointments will be for three (3) years, provided, however, that, of the original members of the Committee, three shall be appointed for a term of one (1) year, three shall be appointed for a term of two (2) years, and the remainder shall be appointed for a term of three (3) years; the student representative shall be appointed for a term of three (3) years or until he/she graduates, whichever comes first. Members of the Committee may be appointed to serve successive terms. In the event any seat on the Committee is vacated prior to expiration of the normal term, the Chair may appoint a successor to fill the unexpired term of the seat vacated.

During the summer sessions and extended University holiday periods, the Chair and such members as are available will have the authority to make recommendations to the University administration to a) expedite the review of intellectual property disclosures deemed time critical in terms of negotiations with prospective licensees, meeting filing deadlines, and the like; b) initiate negotiations with prospective licensees for intellectual property filing/processing fees or the like; and c) such other activities that are time critical and cannot be delayed for handling at a regular or specially called meeting of the Committee.

The business aspects of commercializing intellectual properties are the responsibility of Louisiana Tech University with the approval of the President.

The University does not sponsor product manufacturing, company support functions, customer service, or technology maintenance. In general, it is not appropriate for academic units to produce, market, or sell products and services, or to establish organizations or companies to do so. Instead, Louisiana Tech University, with the approval of the President, has the responsibility to license or sell University developed products to end-users when sales and support do not interfere with the normal activities of University personnel, and when the sale is consistent with the educational mission of the University.

Louisiana Tech, with the approval of the President, may use its allotted portions of the net income received to employ individuals to fulfill specific functions, such as licensing specialists, clerical support personnel, or media specialists to assist with production and distribution of videos and films. (Expenses such as mailing, copying, and other support consistent with marketing the product will be deducted from income generated before distributions are made pursuant to this policy.)

It is the responsibility of deans and unit heads, in harmony with the guidelines that follow, to act so that University resources including University personnel time are used appropriately, and to work with Louisiana Tech University to promote proper fulfillment of the objectives of this policy.

University personnel who believe they have patentable inventions (ideas, concepts, methods, materials, processes) in which the University has ownership rights shall bring them to the attention of Louisiana Tech University by submitting the Invention Disclosure Record (see Appendix I.) When a potential intellectual property application is received by Louisiana Tech University, the University, acting on the recommendation of the Intellectual Property Committee and with the approval of the President, shall proceed with one of three courses of action: (a) pursuit of commercialization by the University; (b) return to the inventor(s) for further research and development before further action; (c) return of the idea/invention to the inventor(s) for his/her/their own intellectual property pursuits by license or assignment as appropriate, relinquishing University responsibilities for costs and retaining a royalty interest.

In those cases where an agency sponsored all or a part of the research, that agency will be informed of intellectual property action(s) within 60 days of such action(s).

No assignment of or license for (or option to assign or license) any invention developed in the course of research supported by funds or utilizing facilities administered by the University may be entered into by any University personnel without the written consent of the University. The University shall have the ultimate right to resolve any conflict of interest arising in this connection with third parties or organizations. The basic objectives of the intellectual property policy stated above shall serve as the criteria for approval of assignments, licenses, and agreements to assign or license.

Foreign intellectual property applications will not be filed unless a) substantial justification exists relative to the commercial potential of the invention; b) one or more firms have expressed their intent to license the technology; or c) the inventor’s college/department/ unit assumes all filing and prosecution costs of such foreign applications.

There will be an annual review of foreign application/intellectual property status. Foreign applications/intellectual property that are not active with respect to license or license potential may be dropped.

When the University’s patents or other intellectual property are subject to the payment of maintenance fees in order to keep such intellectual property in force, there may be instances in which the University decides to abandon some of its non-producing intellectual property. Regarding such non-producing intellectual property to be abandoned by the University, the University will offer to convey such intellectual property to the inventor(s) in the same manner as provided in Section IX herein.

No University personnel shall accuse any third party of infringing any intellectual property owned by the University unless express written permission has previously been obtained from the President of the University to make such allegation or accusation of infringement. Prior to granting such permission and prior to initiating litigation to resolve infringement of a University intellectual property, the President shall consult with legal counsel and other counsel, as the President deems appropriate.

1. Computer software developed by University personnel resulting from non-University support (i.e., no University facilities, computers, personnel, or materials) will at all times be solely owned by the author(s)and developer(s) of the copyrighted material who may choose to market and receive any income as he/she/they solely desires (desire).
2. The University is the author and owner of the copyright in computer software developed by University personnel during and within the scope of their employment, including all works initiated at the University’s request. Income will be distributed according to one of the following plans:

Plan 1: The University copyrights and markets the computer software on its own. All costs, including copyright and marketing costs, are paid by the University. The distribution of any royalty income (or any other type of income resulting from the marketing of the computer software) will be as follows:

The University will retain up to 60% of any income and will pay the balance to the author(s)/developer(s). The decision on income division will be made by the University administration based on a recommendation from the Intellectual Property Committee and approval of the President.

 

Plan 2: The University personnel copyright the computer software naming the University as owner and author and market the computer software on their own. All costs, including copyright and marketing costs, are paid by the University personnel. The breakdown of any income (or any other type of income resulting from the marketing of the computer software) will be as follows:

The creator(s)/developer(s) will receive up to 60% of any copyright income, and the balance will be retained by the University. The decision on income division will be made by the University administration based on a recommendation from the Intellectual Property Committee.

3. University personnel who develop computer software under (2) above which they desire to have copyrighted and marketed should forward their proposal through the appropriate Research Director (for faculty and student employees) or the appropriate Dean (for staff) to Louisiana Tech University for review by the Intellectual Property Committee. The Intellectual Property Committee will review the proposal and will recommend to the University administration whether to follow Plan 1 or 2. In making its recommendation, the Intellectual Property Committee will consider the proposal of the University personnel, but will not be bound by any such proposal.