Information For Faculty
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, useful, non-obvious and enabled. 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 assignee 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.
4. 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 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
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
1. 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.
2. 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.
3. Make sure the control page information is filled out prior to usage.
4. 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.
5. 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.
6. 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.
7. 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.
8. 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.
9. 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.
10. 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.
11. Report the loss of theft of a research notebook.
12. 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.
Technology Transfer Process
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.