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 Louisiana Tech University Intellectual Property Policy (7112) can be found here.
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 Intellectual Property and Commercialization can also assist you in locating such
a book. See below for Louisiana Tech Laboratory Notebook Procedures.
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 Intellectual Property and Commercialization.
Please be advised that it is not possible to patent a mere idea or suggestion, there
must also be a reduction to practice. Also as mentioned on criteria for patentability
is novelty (or no prior publications). Ideally, therefore, the best time to file a
Report of Invention (ROI) is after you have demonstrated that your idea works but
before you have published. 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. See below for The Report of Invention (ROI) form.
The best rule for an inventor to follow is to call or come to the Office of Intellectual
Property and Commercialization if there is a question or concern. Most matters are
readily handled. In some cases, this office will obtain additional assistance from
attorneys experienced in the management and protection of intellectual property.
The submission of a Report of Invention (ROI) to the Office of Intellectual Property
and Commercialization triggers an evaluation that involves the investigation of many
complex patent/legal, ownership, and business related questions. This process is described in greater detail below under Overview of the Technology
Transfer Process.
Before divulging confidential information about your research to people outside of
Louisiana Tech University, particularly to company representatives/scientists, it
is always a good practice to ask them to sign one of our standard secrecy or Non-Disclosure
Agreements (NDA) first. This helps to preserve patent rights for the university and
the non-use provisions prevents the recipient from building on your ideas. Just forward
their contact information to us along with a description of the subject matter that
you’d like to discuss. We’ll then provide them with a copy of our standard NDA for
execution and if necessary negotiate any changes they’d like to make to the agreement.
Once the NDA is put in place we’ll notify you so that you can discuss your technology
freely.
Laboratory Record Keeping Procedure
Laboratory notebooks are the means for keeping a permanent record of the details of
an individual’s day-to-day research and development work in the laboratory or office.
They provide a basic reference which the individual and others can refer to a later
date; legal evidence with respect to the materials recorded, such as conception of
an invention and the date thereof or date of reduction to practice and test results;
in some instances compliance with the provisions of many grant and contractual arrangements.
Select a notebook with bound and numbered pages. This is extremely important. Loose-leaf
notebooks and tablets with tear out pages are not to be used. Each researcher should
have a separate notebook. Notebooks should not be shared.The Tech Bookstore can supply
you with a high-quality, bound book entitled Laboratory Notebook. It is manufactured by Boorum & Pease Company (Esselte), order number L21150R. It
contains a pre-printed version of these instructions as well as other desirable user
aids such as signature and witness lines on every page. This notebook is highly recommended.If
a less expensive notebook is required, The Tech Bookstore can supply you with one
entitled Computation Notebook. It is manufactured by Avery Dennison, order number 43-648. A label can be obtained
from the IP Office (Wyly 1639) to designate this to be a Laboratory Notebook and to
record the necessary owner information. If the reader uses this book, a copy of these
written procedures should be taped to the inside of the front cover for future reference.
One drawback to this book is that it is quadrille printed rather than lined. And the
book does not include pre-printed signature and date line reminders on each page.
But it is bound and page numbered.
Instructions for Recording Data in the Laboratory Notebook
- All entries should be made in a legible and orderly manner using permanent ink, preferably
black. Make entries clear and complete so that someone else could repeat the experiment
if necessary.
- Avoid erasures. If an error is made, cross it out and make the correction immediately
thereafter. Cancellations or insertions should be initialed, dated and explained (in
the margin, if possible), by an appropriate notation.
- Make sure the control page information is filled out prior to usage.
- State the object and results of each experiment clearly and concisely. Give a complete,
factual and self-explanatory account of the progress of the work and the procedure
followed (reference to earlier work done by yourself or another maybe accomplished
by noting a previous page of the same notebook or the page and number of an earlier
notebook). All operating details and conditions should be reordered, indicating yields,
conversion, etc., and identifying products. Describe and give quantities of all materials
used. Explain all code numbers and abbreviations.
- An entry dealing with a conception (invention, idea) should describe the thing conceived
(Example: whether it is a chemical compound, a combination of compounds, a combination
of a compound and a solvent, etc) as well as the utility for the thing conceived,
how it is to be used and the method(s) by which it is to be prepared, including equivalent
materials which could be used. Statements with regard to utility should be stated
positively. Work toward practical implementation of an invention should start as soon
as possible after disclosure in a notebook.
- Negative or disparaging entries should be avoided. (Example: If a reaction was expected
to produce a 2% yield but instead produced 1%, do not state, “ Process does not work”).
Phraseology which expresses gratuitous comments or an opinion rather that a positive
statement and should be avoided. This is not an instruction to omit the conclusion
in an experiment, which had less that the expected results. Be factual.
- Each day’s work should, whenever possible, be started on a separate page with lines
drawn angularly across the unused portion of the previous page. (This gives legal
evidence that additions were not made at a later date.) It is permissible, as stated
above, to make reference to an earlier page by reciting “Continued from page…” It
is extremely important that each page show the date of entry.
- Each page must be signed and dated by the individual who makes the entry and does
the work. In addition, each page should be witnessed (signed and dated), using the
notation “Read and Understood”, preferably on the same day, but at least within one
week. The witness should not be connected with the conception, should not have taken
part in the experimental work performed by another, but should understand the technical
field of the entry. Record the project number and the record book number on each page.
- Where two or more individuals make a conception, it need only be entered in the notebook
of one, but must be signed and dated by all the conceivers. Ideally, all conceivers
should sign on the same day.
- For copying purposes, graphs, charts, analytical data, etc. should be attached to
the notebook pages with a permanent adhesive and should, when unfolded, be kept within
the confines of the opened notebook. No entries should be made on the page beneath attached sheets and nothing must be
obscured. Leave the heading at the top and the space provided for the witnessing signature
at the bottom of each page exposed. Inserts should be signed and dated by the person
making the entry and witnessed by another to provide the best legal evidence. If materials
such as spectra, graphs, etc. are not kept in the notebook, they must be signed, dated
and identified in such a manner as to provide a reference back to the pertinent page(s)
of the Laboratory Notebook itself.
- Report the loss of theft of a research notebook.
- Following the use of all the pages of each Laboratory Notebook, it should be sent
to the IP Office (Wyly 1639) for record maintenance. Make sure that the table of contents
page(s) are complete or that a separate table of contents is supplied. After it has
been recorded it will be returned to the individual. An individual may retain, in
his/her possession, the Laboratory Notebook immediately preceding the one in which
entries are currently being made. Normally, the IP Office will keep all other Laboratory
Notebooks. Authorized individuals may check them out for reasonable lengths of time.
OIPC Forms
Intellectual Property:
Technology Transfer Process
Step 1: Eureka! The discovery of a new invention
The inventor prepares and submits a Report of Invention (ROI) to the Office of Intellectual Property and Commercialization.
Step 2: Initial Review
After the OIPC receives the ROI, it will be reviewed for completeness. It will then
be logged into the system, assigned a case number and an acknowledgement letter will
be sent to the inventor. Next an initial meeting will be scheduled with the inventor.
Depending on the availability of the inventor, this meeting will generally be scheduled
within two weeks of the submission of the ROI.
Step 3: Sponsorship
In completing the ROI it is important to pay particular attention to question 9 (f)
which deals with sponsorship. If the ROI lists funding support from an industrial
sponsor, the appropriate agreement will be consulted to determine if any pre-existing
obligations were conveyed to the sponsoring company in the contract. For example,
commonly an industrial sponsored research agreement will include terms that convey
certain rights to inventions developed during the performance of the project to the
sponsor. These rights most often include an option (right of first refusal) with specific
notification requirements and duration, or limited license rights to inventions. Therefore
before we can market the technology to outside companies we must first determine what
rights may belong to the industrial sponsor, the notification (form and timing) required,
and if necessary offer the sponsor an option to the technology.
If the invention was “conceived or first actually reduced to practice in performance”
of a federally funded project than federal law (Bayh-Dole) would apply. One of the
key provisions of Bayh-Dole is a requirement to notify the sponsoring agency (e.g.,
NSF, NIH, NASA, Dept of Defense, etc.) within 2 months of receipt of the ROI. To assist
us in complying with this obligation please be sure to include on the ROI the grant
number issued by the federal agency (not the project proposal number but rather the
actual grant award number).
Step 4: Patentability
In our assessment of the technology we generally begin by determining whether or not
the discovery is patentable. The criteria for patentability are that the invention
must be novel, useful, non-obvious and enabling. Typically we will conduct a “prior
art” search (a search of the worldwide patent and technical literature) in order to
evaluate the novelty of the invention. Our findings are shared with the inventors
and their opinions considered as a part of our evaluation.
Step 5: Route to Commercialization
As part of our evaluation we also analyze factors of commercial relevance. Among these
are the invention’s state of maturity, development risk, need for other background
patent licenses, and market size or scope. Depending on the faculty member’s interest
in entrepreneurship, in some cases we may find that the best route to commercialization
is through a faculty spin-out company. We work closely with the faculty member to
identify platform technologies that could be the basis of a new business, or that
requires further advancement within a development company before it is a viable licensing
candidate.
Step 6: Patent Filing Decision
Based on the assessment results, a decision is made to file a US patent application.
If the decision is to file, then the inventor’s role is to assist the patent attorney
in the preparation and prosecution of the patent. The time from filing a patent application
to patent issuance can vary from 2-3 years, though it can sometimes take much longer.
If the decision is not to file, the technology may offered back to the inventor and
he or she given the option of paying the costs at his or her own expense.
Step 7: Finding a Licensee
If the technology is found to be patentable, commercially viable and unencumbered
our next steps are to conduct market research to identify likely licensing candidates
and market the intellectual property to industry. We pay particular attention to finding
opportunities for regional economic development, e.g., license to a Louisiana-based
firm. Very often the inventor is an excellent source of leads as they may receive
inquiries from industry scientists about the work as a result of recent publication
or presentation at a meeting or conference. We usually start by drafting an executive
summary of the technology designed to convey the key features and advantages of the
invention while not revealing sufficient detail to create an issue of “public disclosure”
for the purposes of patent law. Since the inventor is the most knowledgeable about
the technology, we often ask the inventor to assist us in writing the executive summary.
Step 8: Negotiating a License
Assuming that a willing and qualified licensee can be found, negotiation over a suitable
license agreement is begun. Recent years have seen a bewildering variety of licensing
alternatives, with the acceptance of equity by the university in a license being one
strategy adopted by many universities. Identification of the correct recipe of reasonable
royalty payments industry-appropriate milestone payments, commercialization goals,
and termination provisions calls for both current intelligence and the skills of a
seasoned license negotiator. Normally the role of the inventor in such negotiations
is akin to the relationship between a realtor and home seller.
