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.
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. Louisiana Tech Laboratory Notebook Procedures are available here.
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. The Report of Invention (ROI) form is available here.
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 at the Overview of the Technology Transfer Process webpage found here.
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.