Conflict of Interest in Licensing

Title:	Conflict of Interest in Licensing
Publication date:	3/30/2021
Effective date:	8/8/2006

BRIEF

Policy Summary

This policy describes the handling of potential conflicts of interest in licensing decisions. Berkeley Lab inventors and licensing staff must not allow their personal financial interests to influence or appear to influence their or others' licensing decisions. Inventors and employees who have a role in licensing decisions must disclose their financial interest in companies with which Berkeley Lab is negotiating a license.

Who Should Read This Policy

This policy applies to all Berkeley Lab inventors and other Laboratory employees who have a role in technology licensing agreements, including those who work part time or who have faculty appointments.

To Read the Full Policy, Go To:

The POLICY tab on this wiki page

Contact Information

Licensing Manager
Intellectual Property Office
[email protected]

Title:	Conflict of Interest in Licensing
Publication date:	3/30/2021
Effective date:	8/8/2006

POLICY

A. Purpose

Lawrence Berkeley National Laboratory (Berkeley Lab) manages the intellectual property created by its employees in support of its research and technology transfer goals. The transfer of technology can include the licensing of inventions and other intellectual property (e.g., through licenses, options, bailments), and constitutes a business decision on the part of the University of California (UC). Berkeley Lab manages conflict of interest and the appearance of conflict of interest in licensing per California law and the UC-DOE Prime Contract for the Laboratory (No. DE-AC02-05CH11231, or Contract 31). Berkeley Lab reviews many attributes, including conflict of interest, of every license, and hence meets the UC requirement for a Licensing Decision Review.

B. Persons Affected

Berkeley Lab inventors
Other Berkeley Lab employees who have a financial interest in a potential licensee
Licensing staff and other staff who review or approve licensing agreements

C. Exceptions

The economic disclosure will not be required in the cases of multiple non-exclusive licenses offered on identical terms to all licensees. A typical example of this is software licensed under a standard agreement to anyone or any company.

D. Policy Statement

Inventors must disclose their financial interest in companies with which the licensing professional is negotiating a license because the inventor may have the opportunity to influence licensing decisions in ways that could lead to personal gain or give advantage to companies in which they have a financial interest.
The Intellectual Property Office's licensing staff will provide the inventor with a copy of the Inventor's Statement of Economic Interest in Candidate Licensees (Form TT-100) when negotiations begin with a company interested in licensing the invention. The inventor must complete and return this form in a timely manner, as the licensing review and approval is dependent upon it.
Berkeley Lab has developed a process to address federal, state, and UC requirements regarding conflicts of interest in the licensing context. See the Process for Conflict of Interest Review for Licensing for details on how the Laboratory manages potential conflicts of interest in licensing.

E. Roles and Responsibilities

Role	Responsibility
Inventor	Discloses any financial interests in potential licensee on Form TT-100
Other Employees with a Financial Interest in a Potential Licensee	Disclose any financial interests in a potential licensee on Form TT-100 if they are aware of the licensing transaction or were requested to do so by IPO
Licensing Staff	Disclose financial interest and recusal from licensing decisions if necessary Obtain DOE approvals for exclusive licensing or assignment to an employee or a former employee or an entity in which such an individual is a principal
Staff Who Review and Approve Licensing Agreements	Disclose financial interest and recusal from licensing decisions if necessary

F. Definitions/Acronyms

Term	Definition
Conflict of Interest	Contract 31, Section I, Clause I.110 - DEAR 952.209-72, Organizational Conflicts of Interest (Aug 2009) (Alternate I) (prev. I.66), ensures that the UC Regents (and its employees) are not biased because of financial, contractual, organizational, or other interests that relate to the work under the Contract, and that there is no unfair competitive advantage over other parties due to the performance under the Contract.
License	Agreement to authorize a use (such as copying software or using a patented invention) to a licensee
Licensing Agreement	As used in this policy, a license or a related contract granting rights in intellectual property such as an option to license or a bailment of tangible research material
Policy	Statements or directives from the federal, state, or local government; the University of California; or Berkeley Lab senior management that set a course of action, define acceptable conduct, or implement governing principles. Example: Berkeley Lab Site Access
IPO	Intellectual Property Office

G. Recordkeeping Requirements

None

H. Implementing Documents

Document number	Title	Type
TT-100	Inventor's Statement of Economic Interest in Candidate Licensees (Form TT-100)	Form

I. Contact Information