Intellectual Property at UNO

Following is an overview of Intellectual Property and its implications and importanace for UNO and its faculty, staff or students involved in reserach.

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 University of New Orleans is the assignee for all inventions covered by the UNO 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 UNO 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. UNO 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 UNO, various logos (university seal with city outline) and word marks (UNO, Univesity of New Orleans, and Privateers) are registrations owned by the university. UNO 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 UNO 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, UNO 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 Technology Management and Commercialization so that a decision can be rendered (patent vs. trade secret) before the barriers of confidentiality are breached.

Procedures For Handling Intellectual Property

All UNO faculty, staff, and some students fall under the provisions of the UNO Intellectual Property Policy. All faculty, staff, and those students who receive a wage (pay check) from UNO are encouraged to review this Policy. A downloadable copy of the UNO Intellectual Property Policy can be found in the Policies page.

Researchers and others are encouraged to maintain a Laboratory notebook and follow UNO Laboratory Recordkeeping Procedures .  The notebook should be used to keep a record of the results of experiments and design activities. 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.

As soon as an invention is made, it should be recorded on Technology Disclosure form and submitted to the Office of Technology Management 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 Technology Disclosure is after you have demonstrated that your idea works but before you publish anything on the subject. Do not submit a manuscript or abstract describing the technology before conferring with the office since public disclosure prior to submitting a patent application may restrict patent rights.  In the event that the invention is part of a dissertation or thesis, alert our office as soon as possible and we will help you.

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 OTMC if they think an invention has been created. A Technology Disclosure Form can then be submitted to formally report the possible invention.This will start a review process..

The best rule for an inventor to follow is to call or come to the Office of Technology Management 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 Technology Disclosure Form to OTMC triggers an evaluation that involves the investigation of many complex patent/legal, ownership, and business related questions. This process is described in greater detail in the  overview of the Technology Transfer Process.

Before divulging confidential information about your research to people outside of UNO, particularly to company representatives/scientists, it is always a good practice to ask them to sign one of our standard confidentiality or Non-Disclosure Agreement (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.