For Intellectual Property to be properly utilized, it must generally first be
protected. Companies capable of commercializing our inventions and discoveries
will usually require protection by patents or other means before risking the
investment required to develop, manufacture, and promote a product or service.
Inventors are often surprised to learn that more that 99% of the required
investment remains to be made by the commercialization partner after the
laboratory work is finished. And the risk of failure may be high long after
major investment commitments are made. For this reason, most licensees require
good patent protection. As a Tech inventor, you can help assure that the
invention is properly protected. In fact, you are the first line of defense.
What Is Intellectual Property?
Intellectual property refers to those creations and works that result from the
creative use of our intellect. Intellectual property can be protected using
patents, copyrights, trademarks, and trade secrets. These are the currency of
intellectual property - the tangible assets that can be licensed, sold, traded -
even lost if we are not careful.
Some people confuse patents, copyrights, and trademarks. Although there may be
some resemblance in the rights of these three kinds of intellectual property,
they are different and serve different purposes.
What Is an Invention?
To be patentable, an invention must be new and useful. It is limited to the
discovery or creation of a new material, a new process, a new use of an existing
material, or an improvement of any of these. "Material" in this context
encompasses a new manufactured product, a new composition of matter, or a
genetically engineered product. In certain circumstances, computer software is
also considered a patentable invention.
What Is a Patent?
A patent for an invention is a grant of a property right by the Government to
the inventor (or his or her assigns), acting through the Patent and Trademark
Office. The Louisiana Tech University or the Louisiana Tech University
Foundation will be the assign for all inventions covered by the Tech
Intellectual Property policy that are retained for commercialization. The term
of the patent shall be 20 years from the date on which the application for the
patent was filed in the United States, subject to the payment of maintenance
fees. The right conferred by the patent extends only throughout the United
States and its territories and possessions.
The right conferred by the patent grant is "the right to exclude others from
making, using, offering for sale, or selling" the invention in the United States
or "importing" the invention into the United States. What is granted is not the
right to make, use, offer for sale, sell or import the invention - such
activities being subject to many other laws, regulations, and economic
conditions.
A patent is a legal document but it is also a technical publication that
describes prior knowledge in the area of the invention and contains a complete
written description of the invention sufficient so that others can re-create it.
Patent law provides for three major categories of patents:
1. Utility patents are granted for the invention or discovery of any new and
useful process, machine, manufacture (article of), or composition of matter, or
any new use or improvement thereof. Most Tech patents fall into this category.
2. Design patents are granted for a new, original, and ornamental design for an
article of manufacture. Such a patent protects only the appearance of the
article and is valid for fourteen years from the date of issuance. Tech does not
routinely pursue design patents and probably will not in the future without
first having an industrial partner willing to pay for the patent expenses under
a license agreement.
3. Plant patents are granted for an invention and discovery, and asexually
reproduced (reproduced by means other than seeds), any distinct and new variety
of plant, including mutants, hybrids, and newly found seedlings, other that
tuber-propagated plants or plants found in an uncultivated state.
The Plant Variety Protection Act (P.L. 91-577), approved in 1970, provides for a
system of protection for sexually reproduced varieties. Plant variety
certificates under this act are issued by the U.S. Department of Agriculture,
not the Patent and Trademark Office.
Generally, an inventor has one year from the first date of disclosure, sale, or
use in which to file for a U.S. patent. After that, patent protection for the
original invention is not possible. At Tech, thesis and dissertations once
cataloged in the library start this one-year clock, as do publications in
journals and presentations at workshops, conferences, and symposiums.
Disclosure to students in a classroom setting may also start the clock running.
Since 1995, it has been possible to file a Provisional Patent Application in
order to establish an inexpensive, early effective filing date. One very useful
benefit of a provisional application is that a one-year extension is also granted for filing the final
application.
Am I an Inventor?
By law, inventorship is based strictly on specifically identifiable intellectual
property contributions to the patentable elements ("claims") of an invention. A
co-author or someone actively participating in the project will not be a
co-inventor unless they add some new idea or modification which goes beyond
those normally expected of a person in that position. Incorrect claims of
inventorship can result in an invalid patent. The common practice in academic
circles of listing all students and associates who may have even critiqued the
document must not be practiced with patent applications.
What Is a Copyright?
A copyright protects the writings of an author against copying. Literary,
dramatic, musical, and artistic works are included within the protection of the
copyright law, which in some instances also confers performing and recording
rights. The copyright goes to the form of expression rather than to the subject
matter of the writing.
What Is a Trademark/Servicemark?
A trademark or servicemark relates to any word, name, symbol, or device which is
used in trade with goods or services to indicate the source or origin of the
goods or services and to distinguish them from the goods and services of others.
At Tech, various logos (university seal and "T" displayed over the state
outline) and word marks (Louisiana Tech University, Louisiana Tech, and Lady
Techsters) are registrations owned by the university. Tech faculty, staff, and
students will generally not create intellectual property in this category.
What Is a Trade Secret?
A trade secret refers to a formula, pattern, device, or compilation of
information that is used in a business and gives it an opportunity to obtain an
advantage over competitors who do not know or use the secret. To qualify as a
trade secret, the information must be kept secret even though more than one
person can have knowledge of it. The trade secret owner must take reasonable
precautions in order to protect its secrecy by identifying written material as
confidential and then limiting those who see it to those who sign agreements of
confidentiality. Records of disclosure (who reads the material) are also
generally maintained. Physical barriers such as fences, locked doors and gates,
guards, and electronic surveillance monitors, and the exclusion of persons
without a "need to know" are also used. Unlike patents, copyrights, and
trademarks/servicemarks, trade secrets are not protected by federal law. Trade
secret disputes are settled according to state law.
It is very likely that Tech faculty, staff, and students will acquire knowledge
or data that in the world of commerce might be a candidate for protection as a
trade secret. Whether or not it would be afforded this unique intellectual
property status becomes a business decision since protecting it will be
expensive. But because of the significantly more restrictive environment of the
trade secret, Tech does not advocate this form of intellectual property. If a
faculty, staff, or student makes a discovery with such potential, it should
immediately be brought to the attention of the Office of Economic Development &
Technology Assessment so that a decision can be rendered (patent vs. trade
secret) before the barriers of confidentiality have been breached.
Procedures For Handling Intellectual Property
All Tech faculty, staff, and some students fall under the provisions of the
Faculty and Staff Handbook, updated and distributed annually before the start of
fall classes. The subject of Intellectual Property Policy is covered in the
section entitled Research And Sponsored Programs and a copy of the policy is
included as an appendix. All faculty, staff, and those students who receive a
wage (pay check) from Tech are encouraged to review the Handbook and in
particular the Intellectual Property Policy. A downloadable copy of the Tech IP
Policy is available on-line.
Researchers and others are encouraged to maintain a Laboratory notebook where
the results of experiments and design activities are maintained in written form.
Some centers maintain a supply of suitable laboratory books for this purpose.
The Office of Economic Development & Technology Assessment can also assist you
in locating such a book. Tech Laboratory Notebook Procedures are
available on-line.
As soon as an invention is made, it should be recorded on a Tech Record of
Invention (ROI) Form and submitted to the Office of Economic Development &
Technology Assessment. In the event that the invention is part of a
dissertation or thesis, alert this office as soon as possible. All faculty,
staff, and administrators having oversight of dissertations, thesis, proposals,
papers submitted for publication, and workshop/seminar presentations can assist
by looking for evidence of inventions in these documents and contacting this
office. In such cases, a completed ROI form is not necessary - simply submit a
copy of the document containing the possible invention along with a brief note.
This will start a review process that may lead to a request that an ROI be
submitted by the inventor. The Record of Invention (ROI) form is available online.
1. Evaluating ROIs and recommending university action;
2. Conducting preliminary assessments of viability and making a recommendation
to seek patents, to seek marketability of the invention, or to take other
action;
3. Recommending the equity positions of the university and inventor;
4. Recommending how the intellectual property is to be assigned.
The Committee is appointed by the President with the Dean of the Graduate School
and Research acting as the Chair. The Director of the Office of Economic
Development & Technology Assessment is a member of the committee and generally
prepares the meeting agenda and makes his recommendation on matters brought
before the committee.
Dr. Terry McConathy Dean, Graduate School & University Research
Dr. Marc Chopin Dir. of Bus. & Econ. Research, Administration & Business
Dr. Paul Hale Assoc. Dean for Ext. Programs, Engineering & Science
Dr. Bill Campbell Assoc. Dean for Grad. Studies & Rsch, Appl. & Nat. Sci.
Dr. Cathy Stockton, Interim Assoc. Dean of Education, Interim Director of Graduate Studies
Dr. Dennis Minor Assoc. Dean for Grad. Studies & Research, Liberal Arts
Ms. Corre Stegall Vice President of University Advancement
Mr. Tom Noble Dir, Economic Development & Technology Assessment
The Louisiana Tech University Research Foundation was organized and authorized in 2000
as an operating entity within the Louisiana Tech University Foundation, a
public, not-for -profit corporation incorporated under the laws of the State of
Louisiana. A relationship agreement was signed with Louisiana Tech
University in 1999 binding the Research Foundation in the performance of its
activities including a provision that binds the Foundation to follow the
Louisiana Tech University Intellectual Property Policy.
The Research Foundation was established to promote commercialization of
intellectual property associated with Louisiana Tech University. The Foundation
is administered by a Board of Directors with assistance from an Executive
Director, appointed by the Board.
The Board of Directors is authorized to accept, buy, sell, lease, or license all
property owned by the Foundation. The Foundation may copyright, patent, market,
and license intellectual property for the benefit of Louisiana Tech University.
The Foundation can take an equity position in lieu of license royalty. The
Foundation can accept private contributions to assist its work, said
contributions not being subject to distribution under the intellectual property
policy. Private funds of the Foundation can be utilized for commercialization
and partnering as directed by the Board.
