Licensing Income and Royalty Distribution

Title:	Licensing Income and Royalty Distribution
Publication date:	3/31/2021
Effective date:	6/30/2008

BRIEF

Policy Summary

Each year, the Intellectual Property Office (IPO) 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
Intellectual Property Office
[email protected]

Title:	Licensing Income and Royalty Distribution
Publication date:	3/31/2021
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 the Intellectual Property Office (IPO).

D. Policy Statement

Inventor Distributions
1. 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.
2. 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.
3. IPO may hold a ceremony to distribute royalty checks and recognize Laboratory researchers for having their technology successfully commercialized.
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.
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
Intellectual Property Office	Manages intellectual property management and licensing

F. Definitions/Acronyms

Term	Definition
Disclosure Date of Intellectual property	The date that the Intellectual Property Office receives the formal written description of the intellectual property, typically the completed Record of Invention or the Software Disclosure 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 principles. Example: Berkeley Lab Site Access
IPO	Intellectual Property Office

G. Recordkeeping Requirements

Role	Responsibility
IPO	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

Licensing Manager

Intellectual Property Office

[email protected]

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
3/31/2021	1.1	R. Carrington	Periodic review. Updated office names and contact info	All	Editorial

DOCUMENT INFORMATION

Title:	Licensing Income and Royalty Distribution
Document number	10.05.001.000
Revision number	1.1
Publication date:	3/31/2021
Effective date:	6/30/2008
Next review date:	3/31/2026
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