Frequently Asked Questions    

How can an LSU researcher transfer LSU proprietary biological materials to an outside entity?

The LSU "Biological Materials Use Agreement" should be used for this purpose. Contact ITC for assistance in this matter. 

How can an LSU researcher share confidential and proprietary results of his/her research with an outside entity?

The confidential and proprietary information and materials of LSU may be shared with outside entities using LSU's standard Confidentiality Agreement. Please contact the Office of Innovation & Technology Commercialization prior to contact with an outside entity for assistance in this matter.

What is a copyright?

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. More information about copyright can be found under the copyright section of the ITC website. 

 

What can be copyrighted?

Books, music, paintings, works of art, computer software, dramatic works, motion pictures, sound recordings, maps, and other original works of authorship may be copyrighted. It is important to note that ideas per se may not be copyrighted.

 

Who owns copyrights at LSU?

The author owns the copyright in many instances, while LSU owns the copyright in others. See Chapter VII of the Bylaws for details on copyright ownership.

 

What is the life of a copyright?

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.

 

How does one protect copyrights?

Copyright status is automatically established by the creation of a work. It is recommended that copyright notices be conspicuously placed on a work.

 

How should the copyright notice appear on a computer software?

There is no set format. The first title screen should usually contain at least the following:

  • Software's name and version
  • Individual author's name(s) or Louisiana State University, as appropriate
  • Publication year
  • Copyright or © 

 

What does the symbol © mean? When should it be used?

The symbol © means "copyright." It is advisable, though not required, to use either the symbol © or the word "copyright" as part of the copyright notice described above.

 

Should copyrights be registered and if so, where?

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, DC.

 

What is a trademark?

A trademark is a name, design, symbol, or other indicium that distinguishes goods or services from one source from goods or services of another source.

 

What do the symbols ® and TM mean? When should they be used?

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 LSU Trademark Licensing to discuss proposed uses of trademarks owned by the University.

What is Intellectual Property?

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. 

 

What is Know-how?

Information that is secret, or that is otherwise not readily available to the public. 

 

Is it possible for LSU to license "know-how" to an outside entity, even though no patents are issued?

Yes, under certain circumstances. Please contact the Office of Innovation & Technology Commercialization if you should have any further questions on the matter. 

May an undergraduate student assign his/her intellectual property rights to LSU? 

Yes, to the extent that an undergraduate student owns rights in intellectual property independently of LSU, he/she may assign such rights to LSU by mutual agreement. It is important to note LSU evaluates such inventions on a case-by-case basis and does not always agree to accept a proposed assignment by a student.

 

When three undergraduate students in a senior design project in mechanical engineering and a mechanical engineering faculty member are joint inventors of an invention, who owns the invention?

LSU owns the faculty member's interest in the invention. The students will usually own their interests in the invention, but may find it advantageous to assign their rights to LSU in exchange for a share of royalties, if doing so is mutually agreeable to the students and to LSU.

How are inventions from federally sponsored research handled?

Title to inventions resulting from federally sponsored research belongs to LSU. When a patent on such an invention is issued to LSU, the US Government has a royalty-free license to use the invention.

 

How are inventions from State-sponsored research handled?

LSU owns such inventions outright.

 

How are inventions from privately sponsored research handled?

The details depend on the particular research contract. In general, LSU 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.

 

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?

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 LSU. Please seek assistance from the Office of Innovation & Technology Commercialization  when handling delicate situations of this nature, we are here to help. 

 

Does LSU have a standard format for research agreements?

Yes. The Office of Sponsored Programs has a "Research Agreement Template" modeled after the "Simplified and Standard Model Agreements for Industry - University Cooperative Research" which was a joint effort of the Government - University - Industry - Research Roundtable of the National Academy of Sciences and the Industrial Research Institute, with an intent to streamline the negotiation process and decrease the time and effort required to reach an agreement among the parties involved.  Contact OSP for more information.

 

Are funds received as research grants that are part of a license considered distributable royalties?

No.

If an employee has a new idea, what should he or she do?

As soon as an LSU employee conceives a new idea with possible commercial potential, a Technology Disclosure Form should be completed and sent to the Office of Innovation & Technology Commercialization.

 

Does completing or submitting a Technology Disclosure Form to the Office of Innovation & Technology Commercialization automatically create patent rights?

No, a Technology Disclosure Form does not create legal rights. Completing and submitting a Technology Disclosure Form are the first important steps in seeking university patent protection, but do not in and of themselves create any legal rights.

 

Who owns LSU employee inventions?

It depends upon the circumstances under which the invention is made. The general rule is that any employee invention belongs to LSU, regardless of when or where the invention was conceived or reduced to practice, and regardless of whether LSU equipment and other resources were used when the invention was conceived or reduced to practice. The Bylaws provide a narrow exception for some inventions that are unrelated to the employee's field of expertise. See the Bylaws for details.
A student is treated as an LSU 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 LSU employees for this purpose, while undergraduate students usually are not.

 

Who owns an invention made on an employee's own time, without use of LSU facilities or funds, and that is in an area or field that has nothing to do with his/her LSU position?

In this situation, the inventor will usually own the invention. It is useful to check with the Office of Innovation & Technology Commercialization in order to help avoid potential misunderstandings.

 

If an employee of LSU and an employee of an outside company or university invent something jointly, who owns the invention?

The resulting patent will usually be jointly owned by LSU and the outside employee/outside employer. It is important to note each case depends on its own facts.

 

How are inventions made by faculty who have joint appointments on two LSU campuses handled?

By cooperation between the Intellectual Property offices of the two campuses. This is an almost routine occurrence.

 

Under what circumstances does LSU release inventions back to the inventor(s)?

On the written request of the inventor(s), if approved by LSU at LSU's discretion. It is important to remember there is no automatic right to have inventions released back to the inventor(s).

Who is an inventor?

One who conceives of an invention as it is ultimately reduced to practice.

 

Who are co-inventors or joint inventors?

Two or more persons who materially contribute to the conception of an idea are co-inventors or joint inventors. Naming the correct inventors is a requirement under federal law in order for a patent to be valid. Identifying the correct legal inventors of an invention can be difficult in some circumstances. Not everyone who works on a research project is necessarily an inventor legally. It is important to understand that the identification of inventors is not a matter to be determined by consensus. Responsibility for this legal determination usually falls upon the patent attorney.

 

How does an inventor document and prove inventorship of patentable ideas?

It is recommended that individuals with this question contact the Office of Innovation & Technology Commercialization for guidelines on how to keep laboratory notebooks for patent purposes. Specific rules apply.

 

What is the difference between licensing a patent and selling a patent?

When a patent is licensed, LSU still holds title to the patent. Only certain rights in the patent are granted to the licensee, under specific terms and conditions. Licensing is somewhat like leasing an apartment. LSU seldom sells a patent. An outright sale changes the ownership, somewhat like selling a home.

 

May an LSU employee take a license from LSU?

Yes, under limited circumstances, provided that the conditions of PM-67 are fulfilled.

 

What are licensing fees?

Initial fees usually due upon execution of a license, and usually not based on sales.

 

What are royalties?

Amounts paid by a licensee, based on the extent to which a patented invention is used. Royalties are often (but not always) a fixed percentage of sales of embodiments of the patented invention.

 

Licensing income received from a technology license is distributed among inventor(s) and the appropriate areas within LSU in accordance with Chapter VII of the Bylaws & Regulations of the LSU Board of Supervisors and  Policy Statement 77. After reimbursement of LSU's patent and legal expenses, distributable income is allocated as follows for the LSU's Flagship institution based in Baton Rouge (other campuses may have slightly different royalty distribution):  

  • 40% Inventor(s)
  • 17% Inventor(s)' department(s)
  • 5% Office of the President
  • 5% LIFT Fund
  • 5% Inventor(s)’ college(s)
  • 3% Inventor(s)' campus
  • 25% Office of Research and Economic Development 

May an LSU employee engage in a side business?

Yes, provided that the conditions of PM-11 are fulfilled.

 

Can an employee engage in outside consulting?

Yes, provided that the provisions of PM-11 are met.

 

When an employee resigns from LSU what happens to royalties that are due to him/her?

Royalties will be paid as if he/she were still employed by LSU.

What is a Patent?

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.

 

Who issues a patent in the United States?

US patents are issued by the United States Patent and Trademark Office (USPTO) in Washington, DC.

 

What can be patented?

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.

 

How long does it take to receive a patent from initiation?

It is not uncommon for the process to take anywhere from two to four years. 

 

What is a provisional patent application?

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 US Patent and Trademark Office, and a patent cannot issue directly from a provisional application. 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, non-provisional 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.

 

Who owns patents at LSU?

The Board of Supervisors of Louisiana State University and Agricultural and Mechanical College owns patents on most inventions made by LSU employees.

 

How does one go about obtaining a patent at LSU?

The process of obtaining a patent on an LSU invention begins when a researcher submits a technology disclosure to the ITC for evaluation.  The ITC initiates the patent prosecution process with one of LSU's contracted patent attorneys, who prepares, files, and prosecutes patents on behalf of LSU's inventors. It is important to note that patent attorney works closely with the inventors throughout the process.   

 

How does the inventor participate in patent prosecution?

The patent attorney communicates with USPTO in close consultation with the inventors.

 

What is the cost of obtaining a US patent?

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 the USPTO, filing fees, etc. It is not unusual for the cost to range between $4,000 and $10,000.

 

What is the cost to the inventor or his/her department to obtain patents?

None. All patenting and other legal expenses, including licensing expenses, are borne by LSU. In certain cases the licensee or the research sponsor pays for such expenses.

 

Can LSU help a non-LSU employee obtain a patent?

No.

 

How are foreign patents obtained?

By filing in foreign patent offices.

 

Who decides to apply for foreign patents?

Foreign patent rights are expensive, and LSU does not often pursue them unless a licensee is willing to pay the foreign patenting costs. Foreign patent applications usually must be filed within twelve months of the initial US filing. Early publication of research results may destroy the possibility of foreign patent protection in many countries outside the US. See also the FAQs on "Publishing/Publications." Contact ITC to discuss further.

 

Who selects the attorney to prosecute a patent application?

The Office of Innovation & Technology Commercialization.

Can an LSU employee conduct a patent search himself/herself?

Yes. It can be both helpful and educational for a researcher to conduct a patent search on a new invention. There is much technical information that is published only in patents and patent applications, and that does not otherwise appear in the traditional academic literature to which university researchers may be more accustomed.  A number of free patent databases are available online at: 

Can a researcher publish his/her findings? If yes, how does it affect patenting in the USA and in foreign countries?

Researchers are generally free to publish or make public disclosures of their findings any time, in any media of their choice, limited only by any pertinent contractual obligations. However, a public disclosure or publication destroys most non-US patent rights immediately if a patent application has not already been filed; US patent rights are lost if a patent application is not filed within twelve months of the publication or presentation. In most cases, filing a US patent application before the first publication or presentation will temporarily preserve the right to file outside the US. If you have any further questions or concerns please contact the Office of Innovation & Technology Commercialization to discuss further.   

 

What is publication for patent purposes?

For purposes of patent law, a publication may be a published article in a journal, magazine, or newspaper; a presentation at a conference; a thesis or dissertation; distribution of preprints; a posting on the Internet; and a number of other events that tend to disclose knowledge to the public, or at least that portion of the public most likely to appreciate its significance. While not technically a "publication", other events that have a similar effect include the sale of an embodiment of an invention, an offer to sell, and the public use of an invention. It is important to note there are certain narrow exceptions that may apply. 

 

Is a grant proposal considered a publication? A discussion of an idea with colleagues?

Submission of grant proposals to state or federal agencies, and discussions on a one-to-one basis with co-workers or peers may or may not be considered publications, depending on surrounding circumstances. Once a grant proposal has been approved, its abstract is generally published, typically online. At least the abstract will then be considered a publication, from the date it become publicly available. The remainder of the grant may or may not be considered a publication as well. Some funding agencies permit portions of a grant application to be specifically marked as "Confidential."

 

Is a dissertation or thesis considered a publication?

In general, yes, although it can be important to identify its effective publication date. Traditionally, a dissertation or thesis was considered to be published once it had been catalogued and shelved in a publicly accessible library. Dissertations and theses are now typically submitted and published electronically, rather than on paper. While unanswered questions remain concerning the legal effects of the relatively recent advent of electronic publication, it is reasonable to expect that the "publication date" of an electronic dissertation or thesis should generally be the date that it is first made available to the public online.

 

When is an electronic dissertation or thesis at LSU made available to the public online?

Graduate degree candidates are given the option to release their work in whole or in part worldwide or within LSU only.  They are also given the option to withhold their dissertation or thesis from publication for a period of time, in some instances. To err on the side of caution, it would be prudent to assume that even release within LSU would be treated as a "publication" under the patent law. Please contact the Graduate School for information about publishing/withholding dissertations or theses.  Please contact ITC to discuss this question further as it relates to patent rights.

 

Are patent applications published?

Yes. Most US patent applications filed after November 2000 are published on the Internet approximately 18 months after the earliest filing date claimed. Patent applications in many other countries have long been published 18 months after filing. A published patent application is itself a publication that might be cited against a later patent application. 

Is it permissible for LSU employees to buy stock in the companies whose main line of business is based on technologies licensed from LSU?

No, especially for those employees whose departments were directly or indirectly involved in the research that led to the technology, or that were directly or indirectly involved in licensing the technology.

 

What is Technology Transfer?

The process of transferring technologies resulting from research to the commercial world.

 

What does the Office of Intellectual Property, Commercialization & Development do?

ITC helps LSU faculty, staff, and students in several ways in the area of intellectual property. For example: 

  • On receipt of a technology disclosure, ITC will evaluate the technical and economic merits of the disclosure.
  • Those disclosures that pass certain approval criteria will be assigned to LSU's patent attorneys for patent prosecution.
  • ITC acts as liaison between inventors and patent attorneys.
  • ITC authorizes and controls patenting expenses.
  • ITC publicizes and solicits commercial interest from outside business and industry in LSU technologies.
  • ITC negotiates licenses with interested entities. Licenses typically call for an upfront, nonrefundable licensing fee, a running royalty based on sales, and minimum royalties. Licenses sometimes provide for research grants or equity as well.
  • ITC distributes royalty income.
  • ITC monitors licenses.
  • ITC reviews research grant contracts and other agreements like confidentiality agreements, material transfer agreements, etc. to insure adequate intellectual property protection for LSU.