UL Lafayette: Intellectual Property: Frequently Asked Questions (FAQs)

Frequently Asked Questions (FAQs)

Q.	*What is the role of Office of Contractual Review?*
A.	The Office of Contractual Review is responsible for identifying, protecting and licensing intellectual property of the University. Key steps include:Protection Review invention disclosures Patent applications/patent prosecution Copyright registration Licensing/Commercialization Technology marketing License agreements License option agreements New company formation Inventor royalty sharing agreements Disbursement of royalty income Other Agreements Inter-institutional agreements (for technology co-owned with other institutions) Material transfer agreements Confidentiality agreements The Office of Contractual Review is responsible for all research agreements, master agreements, memorandums of understanding, etc. related to research programs. However, the Office of Contractual Review will assist with a review of any terms associated with intellectual property matters.


Q.	*What is Intellectual Property?*
A.	Intellectual Property comprises legal rights derived from "products of the mind". It includes legal rights in inventions, discoveries, new ideas, works of authorship, etc., including patents, copyrights, and trademarks.


Q.	*Why does the University patent technology?*
A.	It is required under federal grants - The University is required to patent and commercialize the technology under terms of the Bayh-Dole Act. If the University elects not to patent the discovery, the sponsoring federal agency may request ownership of the patent rights. It is generally required for commercial utilization - Patented technology is a driver of economic development, an expected outcome from state and federally funded research. And, commercial utilization of the University’s research is an important factor in evaluating the success of our research programs. Without patent protection, companies generally will not invest the dollars necessary to bring new products to the market. It benefits the inventor and the public – Patented technology provides for the public good through commercialization of technology by the private sector. A portion of the licensing income is distributed to the inventor(s) to provide incentives for creativity.


Q.	*What is a patent?*
A.	A U.S. patent excludes others from making, using, or selling the invention in the United States. The terms “patent pending” and “patent applied for” are used to inform the public that an application for a patent has been filed. Patent protection does not start until the actual grant of a patent. Marketing of an article as patented, when it is not, is illegal and subject to penalty.


Q.	*What can be patented?*
A.	A patentable invention is a new, useful, and non-obvious: Process Machine Composition of matter Article of manufacture Any new and useful improvement to the above Software can be patented provided it demonstrates useful, tangible results which fall under the above categories. A patent cannot be obtained on a mere idea or suggestion.


Q.	*How do I get a patent?*
A.	Once a U.S. patent application is filed, it takes about 18 months before it is reviewed by a patent examiner from the United States Patent and Trademark Office (USPTO). At that time, the examiner conducts a patent search, identifies several related patents, and often concludes your discovery has already been patented or would be obvious based on the existing prior art. Our patent attorney will work with you to craft a response indicating reasons the invention is new and not obvious in view of the prior art. If allowed, the patent will issue about 24 -36 months after filing.


Q.	*Who owns the patent?*
A.	Generally, the University owns all patents discovered in the course of research under grants or the course of University employment. Refer to the Intellectual Property Policy for details.


Q.	*How do I search for patents?*
A.	Patent searching varies in complexity, based on particular needs. If you are searching for an existing patent, this can be done relatively easily on the USPTO web site. If, however, you are an inventor, looking to see if anyone has claims to a similar patent, patent searching can be a time-consuming endeavor. For example: One must make sure that the item has not been patented. This would require examining each patent in the subject area to determine if there is prior claim to the idea(s). One must search as far back in time as the invention has been technologically possible. Anything that has been previously patented cannot be patented again, even though that patent may have expired. Once a patent expires, the invention becomes part of the public domain, meaning that anyone may be able to use or manufacture the invention listed within.

Q.	*How do I get copies of patents?*
A.	There are several ways to get complete copies of patents. You can either contact the United States Patent and Trademark Office or contact a commercial document supplier. Please note that you will need to know the exact patent numbers in order to obtain copies.


Q.	*What about publications?*
A.	Generally, a patent application should be filed before your manuscript is published. This can take the form of a provisional patent application which protects the technology for one year at minimum cost. And, it can usually be completed quickly so it can be prepared and filed even after you’ve submitted a manuscript for publication.


Q.	*How will a publication affect patent rights?*
A.	Unfortunately, if you publish your discovery before a patent application is filed; all foreign patent rights will be lost. However, you still have a one year grace period to file for US patent protection.


Q.	*What constitutes a publication?*
A.	There are many factors which determine whether a written description of the invention constitutes a publication under patent law. Depending on the circumstances, the following may constitute publication: A manuscript published in a journal or book A thesis (after it is catalogued) A funded grant application which discloses the invention and is published A published abstract which discloses the invention A class handout which becomes publicly available Any description of the invention which is published on-line

Q.	*Can oral presentations or public disclosure affect patent rights?*
A.	Yes. The following events may have the same effect as a publication in that they bar foreign rights and require any US patent to be filed within one year. Depending on the circumstances, the following may constitute public disclosure: Any public disclosure such as an oral presentation or poster presentation The invention was sold or offered for sale The invention was used commercially The invention was publicly displayed or used Disclosures to colleagues in absence of a confidentiality agreement

Q.	*What is an invention?*
A.	A patentable invention is a new, useful and non-obvious: Process Machine Composition of matter Article of manufacture Algorithm Or, any new and useful improvement to the above If you think your idea may qualify, please call the Office of Contractual Review and we can help with a patent search or literature search.


Q.	*I have an invention. What do I need to do?*
A.	The first step in protecting the discovery is to submit a completed Intellectual Property Disclosure Form. The disclosure will be evaluated for patentability and marketability. For licensable technology, a provisional patent application may be filed.


Q.	*Who is the inventor?*
A.	The person(s) who actually conceives the invention is the inventor-not all the inventors need to make the same level of contribution. Inventorship is determined based on the individual’s contribution to the inventive steps as defined in the patent claims. Note: Individuals that only carry out work at the direction of the inventor are not considered to be inventors under patent law. Care must be given to naming/determining the inventors as a patent can be invalidated if the wrong inventors are listed. Keep in mind that authorship and inventorship are distinctly different in that co-authors are typically not inventors unless they participated in conception of one or more of the patent claims.


Q.	*What if one of the inventors is from another institution?*
A.	Many research projects involve collaborators from another university, company, or research laboratory, so it is not uncommon to have outside co-inventors. In such cases, each institution will have an unrestricted right to commercialize the technology without any accounting to the other–unless there is a written agreement specifying how the IP rights are to be handled. When the co-inventor is from another University, the institution of the lead inventor will generally prepare a written inter-institutional agreement whereby it agrees to take the lead in patenting and commercializing the technology. Under the agreement, royalty income is shared between the institutions in an equitable manner and each institution distributes its share in accord with its own policies. When the co-inventor is from a company, a license agreement may be negotiated defining the rights of the parties in commercializing the technology.


Q.	*I have an invention - What do I need to do?*
A.	The first step in protecting the discovery is to submit a completed Intellectual Property Disclosure Form. This begins the process to assure that the intellectual property rights of both you and the University are protected.


Q.	*Are written notebook records important?*
A.	Written laboratory records provide evidence of the date of conception of the invention, provide proof of inventorship, and show that the inventors used diligence in developing an idea. Such documentation is often needed if a third party contest the validity of the patent. Best practices include. Keep a written record of all ideas and experiments in ink. Keep all records in bound notebooks with all pages numbered permanently in ink. Keep lab notebooks intact and free from mutilation. Record all experiments contemporaneously with the performance of the actual events. If the notebook entry records the conception of an idea, both the inventor and witnesses should sign and date the notebook entry and indicate that the witness has read and understood what has been written.


Q.	*Must I disclose my invention?*
A.	Yes. If your research was funded in whole or in part by a federal, state or industrial grant, you are required to file an invention disclosure under terms of the grant. The University in turn, is required to notify the sponsor. For federal grants, the University must report the invention to the sponsoring agency within 60 days and actively work to commercialize the technology to meet the requirement that federally funded inventions should be licensed for commercial development in the public interest.


Q.	*When should I make my invention disclosure?*
A.	You should file the disclosure as soon as you realize your research has uncovered something new and useful – two of the key elements for patentability. While the experimental work need not be complete, a clear and complete written description is required. A working model is not required – drawings and a written description are sufficient.


Q.	*What information is needed for an invention disclosure?*
A.	The minimum requirement includes the names of the inventors, a working title, and a description of the invention. In addition, we ask for background information on the prior art, commercial potential, research sponsors, etc. This information allows us to make a preliminary assessment of the patentability and commercial potential of the invention.


Q.	*What happens to my disclosure after it is submitted?*
A.	Once we receive your disclosure, we will meet with you to discuss your invention in more detail to assess its patentability and commercial potential. For technologies with commercial promise, we often file a provisional patent application to allow sufficient time to find a commercial partner. Generally, we do not file a regular patent application without a commitment from a prospective licensee or UL Lafayette department to fund the $10,000 - $20,000 cost of patenting.


Q.	*What is a copyright?*
A.	A copyright is a federal protection granting authors exclusive rights over their literary works, graphs, pictures, sculptures, architectural works, computer programs, sound recordings, dramatic works, videos, films and other creative works. Copyright is the exclusive right to reproduce copies of the work, to prepare derivative works based on the copyrighted work, to distribute copies of copyrighted works, to perform the copyrighted work publicly, and to display the copyrighted work publicly. A copyright protects the expression of ideas; therefore, the creative work must be in some tangible form of expression such as a writing, recording or picture. The “idea” expressed in a copyrighted work is not protected.


Q.	*What can be copyrighted?*
A.	Books, music, paintings, works of art, computer software, dramatic works, motion pictures, sound recordings, maps, and other original works of authorship may be copyrighted. However, ideas per se may not be copyrighted.


Q.	*What is the life of a copyright?*
A.	Copyrights are in effect for the life of the last surviving author, plus 70 years. If the work is produced as a result of the author's employment, the term is 95 years from the first publication, or 120 years after the creation of the work, whichever is shorter.


Q.	*How does one protect copyrights?*
A.	A copyright exists at the moment an idea is created and recorded as a tangible form of expression. Copyright status is automatically established by the creation of a work. It is recommended that copyright notices be conspicuously placed on a work. However, registration with the Copyright Office is required to file an infringement action.


Q.	*Should copyrights be registered and if so, where?*
A.	It is not mandatory to register copyrights, although registering copyrights within certain time frames has certain advantages. Copyrights are registered with the Library of Congress, Washington, D. C.


Q.	*What is a trademark?*
A.	A trademark is a name, design, symbol, or other indicia that distinguishes goods or services from one source from goods or services of another source.


Q.	*What do the symbols ® and TM mean? When should they be used?*
A.	The symbol ® refers to a registered trademark, a trademark that has been registered by the United States Patent and Trademark Office. The symbol TM refers to a trademark; there is no implication that the mark has been registered with the United States Patent and Trademark Office. It is good practice to respect the trademarks of others by including the appropriate symbol when referring to a product in publications, including papers in peer-reviewed journals. When doing so, it is usually best to use the symbol and nomenclature in the same manner as the manufacturer itself does. Please contact Office of Contractual Review to discuss proposed uses of trademarks owned by the University itself.


Q.	*How are inventions from Federally sponsored research handled?*
A.	Title to inventions resulting from Federally sponsored research belongs to UL Lafayette. When a patent on such an invention is issued to UL Lafayette, the U. S. Government has a royalty-free license to use the invention.


Q.	*How are inventions from State sponsored research handled?*
A.	UL Lafayette owns such inventions outright.


Q.	*How are inventions from privately sponsored research handled?*
A.	The details depend on the particular research contract. In general, UL Lafayette will retain title to intellectual property rights but may grant the sponsor the first opportunity to license the technology under commercially reasonable terms to be negotiated.


Q.	*How should a situation be handled when the potential private sponsor maintains that since it is paying for research, all intellectual property should belong to it?*
A.	The fact of the matter is that the dollars funded for research do not purchase the intellect of a professor with many years of expertise or the accumulated wealth of infrastructure and support provided by UL Lafayette. Let the Office of Contractual Review handle delicate situations of this nature.


Q.	*Does UL Lafayette have a standard format for research agreements?*
A.	Yes. The Office of Contractual Review has a "Collaborative Research and Intellectual Property Agreement” Template with an intent to streamline the negotiation process and decrease the time and effort required to reach an agreement among the parties involved. Contact the Office of Contractual Review first.


Q.	*Are funds received as research grants that are part of a license considered distributable royalties?*
A.	No.


Q.	*Who owns UL Lafayette employee inventions?*
A.	It depends upon the circumstances under which the invention is made. The general rule is that anything an employee invents belongs to UL Lafayette, regardless of time of the day, day of the week, or month of the year; and regardless of whether UL Lafayette equipment and other resources were used when the invention was conceived or reduced to practice. For example, if a professor of chemistry at UL Lafayette were to invent a disease-resistant tomato on a Saturday night while on vacation at a Florida beach, without using any UL Lafayette personnel or facilities, that invention still belongs to UL Lafayette. A student is treated as an UL Lafayette employee for these purposes when acting in the course of his/her employment. While each case will depend on its own facts, graduate students are usually treated as UL Lafayette employees for this purpose, while undergraduate students usually are not.


Q.	*Who owns an invention made on an employee's own time, without use of UL Lafayette facilities or funds, and that is in an area or field that has nothing to do with his/her UL Lafayette position?*
A.	In this situation, the inventor will usually own the invention. The key is that the invention has nothing to do with his or her UL Lafayette position. Check with Office of Contractual Review, however, to help avoid potential misunderstandings.


Q.	*If an employee of UL Lafayette and an employee of an outside company or university invent something jointly, who owns the invention?*
A.	The resulting patent will usually be jointly owned by UL Lafayette and the outside employee/outside employer. Again, each case depends on its own facts.


Q.	*What is a Patent?*
A.	A United States patent is a grant from the government that gives the owner the right to exclude others from making, using, selling, offering for sale, and importing the invention. Patents in other countries carry analogous rights.


Q.	*Who issues a patent in the United States?*
A.	U. S. patents are issued by the United States Patent and Trademark Office (USPTO) in Washington, DC.


Q.	*What can be patented?*
A.	A patent may be obtained on a novel, nonobvious and useful composition of matter, process, machine, article of manufacture, plant, microorganism, animal, computer software, or improvement of any of the above.


Q.	*How long does it take to receive a patent from initiation?*
A.	Two to four years is not uncommon.


Q.	*What is a provisional patent application?*
A.	A provisional patent application is a United States patent application that may be filed without some of the formalities required of a regular patent application. A provisional patent application is not examined by the U. S. Patent and Trademark Office, and a patent cannot issue directly from a provisional application. Please note that a provisional application is abandoned as a matter of law one year after its filing date. A provisional application may be "continued" by filing a regular, nonprovisional patent application satisfying all necessary formalities within one year of the provisional filing date. The principal advantage of a provisional patent application is that its pendency, which cannot exceed one year, does not count as part of the twenty-year patent term. Although a provisional application need not satisfy all the formal requirements of a regular patent application, a provisional application should not be viewed as a vehicle to file a hastily-prepared application, with the thought that any problems can be fixed within the year. Except for complying with certain formal requirements, a provisional application should be prepared with the same degree of care as a regular patent application. The filing of a provisional patent application starts the one-year period during which a foreign patent application may be filed that claims the benefit of a United States filing date.


Q.	*Who owns patents at UL Lafayette?*
A.	The University of Louisiana at Lafayette owns patents on most inventions made by UL Lafayette employees.


Q.	*How does one go about obtaining a patent at UL Lafayette?*
A.	Since patent prosecution is complex, the services of a patent attorney are highly recommended. The patent attorney, on behalf of the inventors, files a written patent application at the USPTO and continue to correspond with USPTO until issuance of a patent or abandonment. Office of Contractual Review generally communicates with UL Lafayette’s patent attorneys in the first instance.


Q.	*How does the inventor participate in patent prosecution?*
A.	The patent attorney communicates with USPTO in close consultation with the inventors.


Q.	*What is the cost of obtaining a U. S. patent?*
A.	The cost of obtaining a patent varies widely. Factors include the attorney's time and hourly rate; the type of technology being patented; the number of claims and drawings included in the application; the number and nature of rejections from USPTO; filing fees, etc. It is not unusual for the cost to range between $4,000 and $10,000.


Q.	*Who is the author of software?*
A.	Generally, software created under research grants or in the course of University employment is considered to be a “work for hire” under US Copyright law so the University is considered as the author of the software. In other circumstances, the “author” of software is the original creator(s) of the code and the author(s) owns the copyright to the software. Refer to the Intellectual Property Policy for details.


Q.	*Do I need to disclose software I have developed?*
A.	Yes. Software should be disclosed to the Office of Contractual Review before it is distributed outside the University so we can determine under what circumstances it can be distributed legally. For example, if the software was developed under a grant or contract, there may be certain restrictions or requirements limiting distribution. Also, we may be required to notify the sponsor prior to distribution. In addition, it may be desirable to patent certain elements of the software and distribution could negatively affect our ability to obtain any patents.


Q.	*How do I disclose software?*
A.	Use the Software Disclosure Form which describes the software and provides an indication as to how you wish to release the software. In most cases, we will provide information on the type of copyright notice to affix to the software prior to its release.


Q.	*How do I copyright software?*
A.	Copyright is automatic and is granted through the process of writing the code (i.e. “when it is fixed in tangible form”). In some cases, it is desirable to register the material with the US Copyright Office-this provides a written record of the material which can be useful in prosecuting infringers. The registration requires completion of a two page form and the first 25 pages and last 25 pages of the code in question. The Office of Contractual Review will register any software that is being considered for license.


Q.	*What protection does copyright offer?*
A.	Copyright protects the fixed tangible expression of an idea – not the idea itself. This means that no one can use your code without permission, but they can independently develop their own code that will accomplish the same objective. The copyright holder has the right to: Reproduce or copy the work Create derivative works Distribute the work Perform the work in public Display the work in public Digital transmission performance Refer to the US Copyright Office at www.copyright.gov for additional details


Q.	*Can software be patented?*
A.	Yes. Since copyright does not protect facts, ideas, systems, or methods of operation; a patent can be very useful in protecting algorithms and business methods provided they have commercial value and can not be easily circumvented.


Q.	*Can software be released under an open source license?*
A.	Yes. If there are no obligations to research sponsors, co owners or other third parties, and all the authors/creators agree, the software can generally be released under an open source license.


Q.	*What are the types of software licenses?*
A.	Software can be licensed for commercial use, for non-commercial or academic use and may be released simultaneously under several different types of licenses. In some cases, an evaluation copy of the software can be provided on a trial basis with a key code that disables the software at the end of the evaluation period.


Q.	*What is a license?*
A.	A license is written agreement which defines the intellectual property and conveys the right to make, use, and sell product and processes using the intellectual property.


Q.	*Does the University sell intellectual property rights?*
A.	No. Generally, IP rights are not sold or assigned to third parties. Instead, we typically negotiate an exclusive or nonexclusive license. Financial terms may include: An up-front fee (or equity) A running royalty on sales A minimum royalty or license maintenance fee Recovery of patent costs In addition, due diligence terms are included to assure the Licensee uses its best efforts to commercialize the technology


Q.	*Does the University ever take equity as part of the license?*
A.	Yes. The University may take equity in a company as part of the consideration for the license–usually in lieu of up-front licensing fees. Typically, equity deals are associated with licensing to start-up companies that need cash for operations.


Q.	*How will you market/license my invention?*
A.	Marketing is an important first step in the licensing process. Generally, companies known by and/or working with the inventor are the best candidates for licensing University technology. In addition, the Office of Contractual Review can provide market research to identify potential licensees and may utilize consultants and other experts to assist in defining target market opportunities. In some cases, University colleges will assist in providing a market assessment and a list of target companies.


Q.	*Do you license to start-up companies?*
A.	Yes. Often, University technology is in such an early stage of development that existing companies are unwilling to undertake the risk of development. In such cases, a start-up company may be able to move the technology further down the “pipeline” so that it can be commercialized, licensed, and/or acquired by an existing company.


Q.	*Who conducts the licensing negotiations?*
A.	License negotiations are handled by the staff of the Office of Contractual Review.


Q.	*Who signs the license agreement?*
A.	The President of the University signs the license agreement on behalf of the University.

Contact Information
Nelson Schexnayder
Director, Office of Contractual Review
University of Louisiana at Lafayette
Suite 315, Martin Hall
UL Lafayette Box 43610
Lafayette, Louisiana 70504-3610
Phone: 337/482-5948
Fax: 337/482-5102
Email: njs@louisiana.edu

Andrea Strickland
Administrative Assistant
Office of Contractual Review
University of Louisiana at Lafayette
Suite 315, Martin Hall
UL Lafayette Box 43610
Lafayette, Louisiana 70504-3610
Phone: 337/482-1487
Fax: 337/482-5102
Email: andrea@louisiana.edu

Document last revised Monday, June 30, 2008 3:07 PM