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Licensing Income and Royalty Distribution

    Title:

    Licensing Income and Royalty Distribution

    Publication date:

    9/15/2012

    Effective date:

    6/30/2008

    BRIEF

    Policy Summary

    Each year, Technology Transfer and Intellectual Property Management (TTIPM) distributes defined portions of income received by Berkeley Lab in the preceding fiscal year from the licensing of Laboratory intellectual property among inventors (Berkeley Lab employees and others who have assigned to the University of California their rights to Berkeley Lab-managed intellectual property, or the creators of Berkeley Lab tangible research materials); the research division(s) in which the invention arose; and a central Berkeley Lab research pool.

    Who Should Read This Policy

    This policy applies to:

    • All Berkeley Lab researchers and technical staff, including affiliates who have assigned rights to intellectual property to the University of California
    • The Directorate and other division management
    • Division financial analysts

    To Read the Full Policy, Go To:

    The POLICY tab on this wiki page

    Contact Information

    Licensing Manager
    Technology Transfer and Intellectual Property Management
    ttd@lbl.gov

    Title:

    Licensing Income and Royalty Distribution

    Publication date:

    9/15/2012

    Effective date:

    6/30/2008

    POLICY

    A. Purpose

    Lawrence Berkeley National Laboratory (Berkeley Lab) annually distributes to Berkeley Lab inventors a portion of income received by the Laboratory in the preceding fiscal year from the licensing of Laboratory intellectual property. UC Patent Policy requires all UC/DOE national laboratories to complete this distribution by the February following the end of the fiscal year.

    B. Persons Affected

    Berkeley Lab researchers and technical staff with licensed technology, including affiliates who have assigned rights to intellectual property to the University of California

    C. Exceptions

    An inventor who would otherwise be receiving licensing income may irrevocably donate his or her share to Berkeley Lab or to another person by means of a written agreement approved by Technology Transfer and Intellectual Property Management (TTIPM).

    D. Policy Statement

    1. Inventor Distributions
      1. Every year, Berkeley Lab holds a ceremony to distribute royalty checks and recognize Laboratory researchers for having their technology successfully commercialized.
      2. The revenue (royalties) generated from any type of Berkeley Lab licensing agreement is first applied toward reimbursing the costs of intellectual-property protection, such as patenting costs or copyright registration fees. Net royalties are distributed according to the following rules, subject to amendment of UC Patent Policy:
        1. For intellectual property disclosed after September 30, 1997, the inventors' share is 35% of net royalties per invention or other intellectual property.
        2. For intellectual property disclosed before October 1, 1997, the inventors' share is 50% of net royalties per invention or other intellectual property with net royalties calculated after a 15% administrative charge.
        3. For qualifying inventors who elected to be governed under the November 18, 1985, UC Patent Policy, the inventors' share is 50% of net royalties per invention or other intellectual property, with net royalties calculated after a 15% administrative charge, regardless of date of disclosure of the relevant intellectual property.
      3. If the invention was created by more than one Berkeley Lab inventor, the Laboratory distributes to each inventor an equal share of royalties, unless all affected inventors have previously agreed in writing to a different distribution of those inventors' share of royalties.
    2. Allocation to Research Divisions
      1. Effective in fiscal year 2000, Berkeley Lab allocates 15% of net royalties from each invention or other intellectual property to the research division in which the invention arose. If the inventors belong to different divisions, this 15% division share is split proportionally by the number of inventors by division.
      2. The research division must use its allocation for research and development activities within the Laboratory's mission. Work must not interfere with or impose adverse effects on ongoing DOE projects and programs. Expenditures may include operating costs (e.g., personnel, supplies, recharges, or travel) or equipment in support of that research.
    3. Allocation to Central Research Pool. Effective in fiscal year 2000, the remaining net royalties (after the inventors' distribution and the allocation to the research division) is pooled in an account for use at Berkeley Lab for scientific research and development, technology transfer, and/or education. This remaining Laboratory share is generally 35% of the total net royalties for technologies disclosed before October 1, 1997, and 50% for technologies disclosed thereafter. This central pool is allocated at the direction of the Laboratory Director or his or her designee, the Laboratory Deputy Director. Activities using this allocation must not interfere with or impose adverse effects on ongoing DOE projects and programs.

    E. Roles and Responsibilities

    Role

    Responsibility

    Licensing Manager

    Oversees the allocation of licensing income

    Office of the Chief Financial Officer staff

    Implements the allocation of licensing income

    Division Director

    Directly or indirectly through his/her designee(s) allocates the use for research of the division's licensing income allocation

    Berkeley Lab Director or Deputy Director

    Allocates the use for research, technology transfer, and/or education from the central pool

    Directorate and Division Financial Analysts

    Track expenditures of licensing income

    Technology Transfer and Intellectual Property Management

    Manages intellectual-property management and licensing

    F. Definitions/Acronyms

    Term

    Definition

    Disclosure Date of Intellectual property

    The date that Technology Transfer and Intellectual Property Management receives the formal written description of the intellectual property, typically the completed Record of Invention or the Software Disclosure and Abstract form

    Inventor

    A person who conceived or contributed to the conception of an invention. As used in this policy, inventor may also refer to the author of copyrighted work, or the creator of other intellectual property or tangible research materials licensed by Berkeley Lab for royalty income.

    Intellectual Property (IP)

    Intellectual property (IP) refers to creations of the mind: inventions, creative, literary and artistic works, and symbols, names, images, and designs used in commerce. The means to protect IP include patents, trademarks, copyright and trade secrets. Patents protect inventions. Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. Copyrights protect works of authorship, such as writings, software, music, and works of art that have been tangibly expressed. Trade secrets are information that companies keep secret to give them an advantage over their competitors. While Berkeley Lab has discretion to secure and license patents, trademarks and copyrights, it is prohibited by DOE policy from licensing trade secrets.

    Royalty or Licensing Income

    As used in this policy, money received by Berkeley Lab as payment for use of intellectual property or tangible research materials, but not including reimbursement of intellectual property protection or litigation costs

    Net Royalty or Licensing Income

    As used in this policy, royalties received by Berkeley Lab after deducting (1) amounts payable to non-Berkeley Lab owners or licensors of the intellectual property; and (2) patent or other intellectual-property protection costs (including litigation), reserves for bad debt, and licensing costs

    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 principlesExample: Berkeley Lab Site Access

    TTIPM

    Technology Transfer and Intellectual Property Management

    G. Recordkeeping Requirements

    Role

    Responsibility

    TTIPM

    Keeps records of all licenses, patent, and other intellectual property expenses and royalty calculations

    Divisions

    Keep records of their allocations and expenditures of licensing income

    H. Implementing Documents

    None

    I. Contact Information

    Technology Transfer and Intellectual Property Management
    ttd@lbl.gov

    J. Revision History

    Date

    Revision

    By whom

    Revision Description

    Section(s) affected

    Change Type

    1/2/2012

    0

    H.Clark

    Re-write for wiki (brief)

    All

    Minor

    9/15/2012

    1

    V.Wolinsky

    Re-write for wiki (policy)

    All

    Minor

    DOCUMENT INFORMATION

    Title:

    Licensing Income and Royalty Distribution

    Document number

    10.05.001.000

    Revision number

    1

    Publication date:

    9/15/2012

    Effective date:

    6/30/2008

    Next review date:

    9/15/2015

    Policy Area:

    Licensing

    RPM Section (home)

    Information Management

    RPM Section (cross-reference)

    Financial Management

    Functional Division

     

    Prior reference information (optional)

    RPM Section 5.05

    Source Requirements Documents

    UC Patent Policy – 1997

    Implementing Documents

    None

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