Lawrence Berkeley National Laboratory masthead LBNL Home A-Z Index U.S. Department of Energy logo Phone Book Jobs Search

RPM

REQUIREMENTS AND POLICIES MANUAL

Search the RPM
 
Home

Reporting Inventions and Electing Title

    Title:

    Reporting Inventions and Electing Title

    Publication date:

    11/27/2012

    Effective date:

    3/12/2007

    BRIEF

    Policy Summary

    Technology Transfer and Intellectual Property Management (TTIPM) is required to report all Berkeley Lab inventions to the Department of Energy (DOE). Berkeley Lab may elect title to each invention in order to commercialize/license the technology.

    Who Should Read This Policy

    • TTIPM staff
    • Berkeley Lab employees who have reported an invention to TTIPM

    To Read the Full Policy, Go To:

    The POLICY tab on this wiki page

    Contact Information

    Technology Transfer and Intellectual Property Management
    ttd@lbl.gov

    Title:

    Reporting Inventions and Electing Title

    Publication date:

    11/27/2012

    Effective date:

    3/12/2007

    POLICY

    A. Purpose

    Technology Transfer and Intellectual Property Management (TTIPM) is required to report all new inventions to DOE. Lawrence Berkeley National Laboratory (Berkeley Lab) may elect title to each invention in order to commercialize/license the technology, and protect DOE interest in the inventions.

    B. Persons Affected

    • TTIPM staff
    • Berkeley Lab employees who have reported an invention to TTIPM

    C. Exceptions

    Inventions that are not conceived or first reduced to practice in the performance of Berkeley Lab work do not need to be reported to DOE (although Berkeley Lab employees and affiliates must still report those inventions to TTIPM).

    D. Policy Statement

    1. TTIPM must report each new invention or software to DOE within two months of the receipt of the Record of Invention (ROI) form submitted by an inventor.
    2. TTIPM has two years, from the date a new invention was reported to DOE, to elect title to the invention in writing from DOE.
    3. If TTIPM elects title to an invention, TTIPM has one year, from the date title was elected for the invention, to file an initial patent application with the U.S. Patent and Trademark Office. However, in any case where publication, sale, or offer for sale or public use has initiated the one-year statutory period wherein valid patent protection can still be obtained in the U.S. (i.e., the one-year bar date), the period for election of title may be shortened by DOE to a date that is no more than 60 days prior to the one-year bar date.
    4. Berkeley Lab may issue a request to DOE for an extension of any the above-mentioned time limits. DOE has discretion whether to grant an extension.

    E. Roles and Responsibilities

    Role

    Responsibility

    TTIPM Patent Assistant

    • Sends a written report of a new invention to DOE
    • Sends a written election of title

    TTIPM Licensing Staff

    Decides whether to elect title to an invention

    TTIPM Patent Attorney

    Prepares and files the patent application for an invention, or engages an outside patent attorney or agent to do so

    F. Definitions/Acronyms

    Term

    Definition

    Invention

    A new and useful process, machine, 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 a patentable invention.

    Patent

    A property right to an invention granted by the U.S. government or a foreign government to an inventor or the inventor's assignee (typically, the inventor's employer) upon the successful application to the appropriate government patent office. The patent gives the owner of the patent the right, during the term of the patent, to exclude others from making, using, offering for sale, or selling the invention throughout the country where property rights are protected or importing the invention into that country.

    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

    TTIPM

    Technology Transfer and Intellectual Property Management

    G. Recordkeeping Requirements

    TTIPM keeps a record of all ROIs and copies of DOE notifications.

    H. Implementing Documents

    Document number

    Title

    Type

    N/A

    Record of Invention (ROI) Form

    Form

    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

    11/27/2012

    1

    R.Chiang and V. Wolinsky

    Re-write for wiki (policy)

    All

    Major

    DOCUMENT INFORMATION

    Title:

    Reporting Inventions and Electing Title

    Document number

    10.05.005.000

    Revision number

    1

    Publication date:

    11/27/2012

    Effective date:

    3/12/2007

    Next review date:

    11/27/2015

    Policy area:

    Licensing

    RPM Section (home)

    Information Management

    RPM Section (Cross reference)

    None

    Functional area

    Technology Transfer

    Prior reference information (optional)

     

    Source Requirements Documents

    U.S. Department of Energy (DOE) Contract No. DE-AC02-05CH11231, Clause I.97(c), DEAR 970.5227 – 10 Patent Rights – Management and Operating Contracts, Nonprofit Organization or Small Business Firm Contractor (Aug 2002)

    Implementing Documents

    Document number

    Title

    Type

    N/A

    Record of Invention (ROI) Form

    Form

    • No labels

    Adaptavist ThemeBuilder EngineAtlassian Confluence