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    Title:

    Patents - Publication Review Policy

    Publication date:

    6/22/2021

    Effective date:

    5/16/2019

    BRIEF

    Policy Summary

    All publications — whether written, oral, visual, or electronic — describing technical or scientific work by Lawrence Berkeley National Laboratory (Berkeley Lab) employees and affiliates or performed using Berkeley Lab resources and facilities must be reviewed prior to publication or public disclosure to identify Berkeley Lab inventions. Exceptions include disclosures to certain government and University of California personnel or entities covered by a nondisclosure agreement signed by the Intellectual Property Office (IPO).
    Publications include written reports submitted to professional or scientific journals, oral and written conference presentations, abstracts, Ph.D. theses, and any other material presented that may contain patentable invention information.

    Who Should Read This Policy

    This policy applies to all employees and affiliates, especially researchers and other technical staff, including those who work part time or have a faculty appointment.

    To Read the Full Policy, Go To:

    The POLICY tab on this wiki page

    Contact Information

    Legal — Patent Counsel:
    Stephen Glade, [email protected]
    Robin Chiang, [email protected]

    Title:

    Patents - Publication Review Policy

    Publication date:

    6/22/2021

    Effective date:

    5/16/2019

    POLICY

    A. Purpose

    The purpose of review before publication is to (1) ensure that public disclosures of scientific or technical developments arising from Lawrence Berkeley National Laboratory (Berkley Lab) do not adversely affect the patent interests of Berkeley Lab, the University of California, or the U.S. Department of Energy (DOE); and (2) ensure that all inventions created under Berkeley Lab's contract with the DOE have been reported and, if appropriate, that patent rights are protected for future commercialization. This publication review is not intended to be the primary means to identify Berkeley Lab inventions. Possible inventions should be reported to the Intellectual Property Office (IPO) on a Record of Invention (ROI) form, currently accessible through the online IPO Innovation Portal, before the material is ready for publication so that patent rights are not adversely affected and can be protected.

    B. Persons Affected

    This policy applies to all employees and affiliates, especially researchers and other technical staff, including those who work part time or have a faculty appointment.

    C. Exceptions

    Disclosures to certain government and University of California personnel or entities covered by a nondisclosure agreement signed by the IPO.

    D. Policy Statement

    1. Prior to releasing or publishing information of a scientific or technical development arising from Berkeley Lab ("the Publication") to the public, the authors must review the Publication for any inventions. This review is performed using the criteria in the "Guidelines for Identifying an Invention" at the end of this policy statement. The following do not require publication review: (1) properly marked disclosures to federal government employees subject to the Trade Secrets Act and disclosures to University of California personnel; and (2) publications or presentations covered by a nondisclosure agreement signed by the IPO.
    2. The types of documents that must be reviewed for any unreported patentable inventions include the following, whether made public in written, oral, visual, or electronic form:
      1. Manuscripts to be submitted to scientific or professional journals;
      2. Abstracts to be submitted to scientific or professional conferences or meetings;
      3. Oral and written conference presentations (e.g., slides or viewgraphs) or posters;
      4. Presentations to be made for job interviews;
      5. Master's and Ph.D. theses;
      6. Proposals and reports (unless properly marked) submitted to DOE personnel; and
      7. Any other material that might described as an invention.
    3. When authors identify an invention in a Publication under this policy, they are to report the invention to the IPO. This reporting is performed through the Innovation Portal at https://ipo.lbl.gov/discloseinventions. Authors can seek assistance from Berkeley Lab Patent Counsel or a Technology Commercialization Associate through the IPO to determine if a Publication describes an invention. If the authors do not identify any inventions in the Publication, releasing or publishing the Publication may proceed.
    4. Division directors and the IPO are responsible for ensuring division scientists and researchers are adequately informed of this policy.
    5. The guidelines are as follows.

    Guidelines for Identifying an Invention

    1. Does the Publication describe a new device, method, or composition of matter, or does the Publication describe a device or method with a new operation, feature, or component? (An invention is NOT novel if it is known by the public before the filing date of a patent application.)
    2. Did at least one Berkeley Lab employee or affiliate make a contribution to the device, method, or composition of matter? (Performing a known experiment on a device, method, or composition of matter designed and produced by another is not making a contribution).
    3. Does the device, method, or composition of matter have a utility, e.g., an industrial application?
    4. Is the device, method, or composition of matter not obvious to one of ordinary skill in the art? (An invention may be obvious to one of ordinary skill in the art if it can be demonstrated that at the time of the invention, the literature contained a teaching, suggestion, or motivation to combine known elements to arrive at the invention.)

    If the answer is "yes" to all four questions, then an invention is potentially described by the Publication. The author may seek advice from Berkeley Lab Patent Counsel to identify whether there is an invention. Inventions must be reported to the IPO through submission to the Innovation Portal at https://ipo.lbl.gov/discloseinventions. If there is no invention, no further action is required.

    E. Roles and Responsibilities

    Role

    Responsibility

    Inventor/Author

    • Prior to releasing or publishing information of a scientific or technical development arising from Berkeley Lab to the public, authors must review the information for any inventions. When authors identify an invention in a Publication under this policy, they are to report the invention to the IPO.

    F. Definitions/Acronyms

    Term

    Definition

    Invention

    A new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement that is patentable under the laws of the U.S. or a foreign country. Certain software may be patentable.

    Inventor

    A person who conceived or contributed to the conception of an invention

    IPO

    Intellectual Property Office

    Nondisclosure Agreement

    A legal contract between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. The recipient is typically prohibited from disclosing the confidential information except to those within the recipient organization with a "need to know," subject to certain common exceptions or time limits. A nondisclosure agreement is also called a "confidentiality agreement" or a "proprietary information agreement."

    Patent Counsel

    A Berkeley Lab attorney who is a member in good standing of the bar of any U.S. court or the highest court of any state and who is registered to practice before the U.S. Patents and Trademark Office

    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.

    Publications

    Publications include written reports, articles submitted to professional or scientific journals, oral and written conference presentations, abstracts, master's and Ph.D. theses, and any other material presented that could contain patentable invention information

    Record of Invention

    The report that is generated when an inventor reports an invention to the IPO through the Innovation Portal at https://ipo.lbl.gov/discloseinventions


    G. Recordkeeping Requirements

    All records of invention disclosures are submitted and tracked online in the IPO Innovation Portal maintained by the IT Division and the IPO.

    H. Implementing Documents

    None.

    I. Contact Information

    Legal — Patent Counsel:
    Stephen Glade, [email protected]
    Robin Chiang, [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

    12/3/2012

    1

    R. Chiang

    Re-write for wiki (policy)

    All

    Minor

    06/22/2021

    2

    R. Chiang

    Re-write due to Contract clause change to SC Alternate 2018 version; provides guidance and procedure for invention identification; no longer require Patent counsel pre-publication review

    All

    Major

    DOCUMENT INFORMATION

    Title:

    Patents - Publication Review Policy

    Document number

    10.04.002.000

    Revision number

    2

    Publication date:

    6/22/2021

    Effective date:

    5/16/2019

    Next review date:

    6/22/2024

    Policy Area:

    Intellectual Property

    RPM Section (home)

    Info Management

    RPM Section (cross-reference)

    Asset Management

    Functional Division


    Prior reference information (optional)

    RPM Sections 5.02(F) and 5.03(B)(2)

    Source Requirements Documents

    U.S. Department of Energy (DOE) Contract No. DE-AC02-05CH11231, Clause I.143(c)(6), DEAR 970.5227 –10 Patent Rights – Management And Operating Contracts, Nonprofit Organization or Small Business Firm Contractor, Aug 2002 (SC Alternate Apr 2018)

    Implementing Documents

    None.

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