The details related to IP ownership can 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.
UL Lafayette owns such inventions outright.
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.
Once we receive your disclosure, we will meet with you to discuss your invention in more detail. For technologies with commercial promise, we often file a provisional patent application to allow sufficient time to find a commercial partner.
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.
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.
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.
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.
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.
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.
