§5.03
Patents
Responsible Manager
Revised 03/08
Links updated 09/08
- The DOE/LBNL
Contract provides the United States government with certain rights in
inventions made by Laboratory employees or guests at the Laboratory, or by
anyone using Laboratory facilities or Lab resources. The Contract also
provides the University the right to elect title to (i.e., to take full ownership
of) the invention.
- To protect the government interest, the contract requires that Berkeley Lab
report all inventions made under the contract to DOE patent counsel and that
all information produced at the Laboratory be cleared for possible inventions
before publication.
- Employees and guests are obligated to provide assistance to Technology
Transfer and Intellectual Property Management (Technology Transfer) in evaluation
and transfer of the technologies (typically inventions or software) that they
have developed.
- It is the inventor's responsibility to report all inventions
promptly to Berkeley Lab Technology
Transfer and Intellectual Property Management within six months of conception
or first actual reduction to practice, whichever occurs first. The
form to be used to report inventions, the Record of Invention (ROI) form,
is available at http://www.lbl.gov/Tech-Transfer/researchers/forms.html.
This obligation is stated in the Intellectual Property Acknowledgment, which
is signed by all employees and guests when they begin working at Berkeley
Lab.
- The protocols for experiments, results of experiments, and/or other
data that document inventions referred to in (a), above, must be kept in a
permanently bound, ledger-type notebook with numbered pages. The specific procedure
recommended for recording data describing original research and development
work that leads to invention is on the Web at http://www.lbl.gov/Tech-Transfer/researchers/lab_note.html.
- All notebooks and equivalent records of Berkeley Lab research are the property
of the United States government. Researchers may make copies for their own
personal records. These records may be maintained in the appropriate group
as long as necessary and then forwarded to Archives and Records for storage.
- Technology Transfer and Intellectual Property Management will report the
invention to DOE and any others to whom there is an obligation to report,
and will evaluate the invention for commercialization potential.
- All publications, whether print or electronic, describing work by
Laboratory employees and guests or done with Berkeley Lab facilities must
be reviewed and cleared by Technology Transfer before they can be sent outside
the Laboratory, except for restricted disclosure to certain government and
University of California personnel, or if covered by a confidentiality agreement
signed by Technology Transfer (see RPM §5.07 or §10.10).
- Publications that must be reviewed for patent clearance (to determine
whether any patentable inventions are described) include not only Laboratory
written reports, but also the following, whether made public in written,
oral, visual, or electronic form:
- Articles to be submitted to scientific or professional
journals
- Oral and written conference presentations (e.g., slides
or viewgraphs) or posters
- Abstracts
- PhD theses
- Any other material that could contain invention information
-
The purpose of patent review is to ensure that all inventions have been
reported and if appropriate, protected for future commercialization. Possible
inventions should be reported to Technology Transfer on an ROI form (see
Paragraph (B)(1)(a) above) before the material is ready for publication
so that patent rights will not be inadvertently lost. The review process
is described at http://www.lbl.gov/Workplace/patent/patpubreview.html.
A prior electronic publication will bar an inventor from receiving a patent
outside the United States just as a print publication will. Nothing can be
done to recover that patent opportunity. Inside the United States, a patent
application can still be filed if it is done within one year after the publication
date. After this one-year period expires, no patent may be filed for that invention.
If an e-mail message is a confidential exchange between two individuals, the
message is not considered to be a publication. The status of the message is
less certain, however, if the communication is to a group or to an individual
who forwards the message to a group. As sharing or forwarding e-mail is so
easy, it is not advisable to convey information regarding an invention via
e-mail without checking with a patent practitioner in Technology Transfer. If
necessary, Technology Transfer can provide a confidentiality agreement (also
known as a non-disclosure agreement) to allow sharing the information without
it becoming a publication.
The patent policy described above applies to research by, and writings of,
Laboratory employees. The following paragraphs contain additional patent review
requirements:
- RPM §1.06(A)(3)(b) (Policy
for All Participating Guests). Requires participating visitors to
sign a Laboratory Visitor Intellectual Property Acknowledgment.
- RPM §2.01(C)(7)(d) (Patent Policy).
States University patent policy applying to Laboratory employees.
- RPM §10.02(H) (Patent Agreements).
Describes patent policy applying to Laboratory employees serving as consultants
to other organizations.
- RPM §11.04(C)(11) (Patents,
Data, and Copyrights). Discusses patent policies applying to consultants
to the Laboratory.