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U.S. Competitiveness in Licensing

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    Title:

    U.S. Competitiveness in Licensing

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    BRIEF

    Policy Summary

    Berkeley Lab's Intellectual Property Office (IPO) department must make intellectual-property licensing and assignment decisions that give preference to licensees who provide economic and technological benefits to the U.S. domestic economy.

    Who Should Read This Policy

    Berkeley Lab researchers and IPO staff

    To Read the Full Policy, Go To:

    The POLICY tab on this wiki page

    Contact Information

    Licensing Manager
    Intellectual Property Office
    [email protected]

    Title:

    U.S. Competitiveness in Licensing

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    POLICY

    A. Purpose

    This policy describes intellectual property licensing requirements at Lawrence Berkeley National Laboratory (Berkeley Lab).

    B. Persons Affected

    Berkeley Lab researchers and Intellectual Property Office (IPO) staff.

    C. Exceptions

    Berkeley Lab can request approval from the Department of Energy (DOE) Contracting Officer to waive the U.S. competitive requirement if such requirement is deemed to be not commercially feasible.

    D. Policy Statement

    Berkeley Lab supports the U.S. domestic economy through its intellectual property licensing program.

    1. Some of the factors IPO considers in its licensing program include:
      1. Whether related research & development will be performed in the U.S., and whether licensed products or components of licensed products will be substantially manufactured in the U.S.
      2. Whether a proposed licensee has a business located in the U.S. and whether any economic and technical benefits will flow to the US from the license or the assignment.
      3. If the licensee is controlled by a foreign company or government, whether that foreign country's government allows U.S. entities to enter into cooperative research agreements and whether it protects U.S. intellectual property rights
    2. When a foreign company or government controls a potential licensee, IPO will research specified U.S. Trade Representative reports and other relevant information to reach conclusions regarding the foreign country's intellectual property stance.
    3. In the case of exclusive licenses, IPO will require that the licensees substantially manufacture in the U.S. licensed products for the U.S. market.

    E. Roles and Responsibilities

    Role

    Responsibility

    IPO Licensing Staff

    • Considers the U.S. competitiveness factors
    • Researches the U.S. Trade Representative reports as necessary
    • Includes the required substantial U.S. manufacturing provision in exclusive licenses
    • Keeps records of consideration of U.S. competitiveness factors as well as copies of any required DOE approvals

    Department of Energy

    Responds to any requests for a waiver of the U.S. competitiveness requirement within 30 days

    F. Definitions/Acronyms

    Term

    Definition

    Exclusive License

    An agreement between an owner and another party that permits the other party to make certain use of the property, with the understanding that the owner may not concurrently grant any other licenses that have the same rights within the scope or field covered by the exclusive license

    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

    IPO

    Intellectual Property Office

    G. Recordkeeping Requirements

    IPO Licensing keeps records of its consideration of U.S. industrial competitiveness factors as well as copies of any required DOE approvals.

    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

    New

    All

    Major

    11/27/2012

    1

    V. Wolinsky

    New

    All

    Minor

    12/17/2020
    D. Soustin Updated Contract 31 I clause numbers as per mod 1105 Source Requirement Documents Editorial
    3/31/2021 2 R. Carrington Periodic review. Minor policy clarifications. Updated office names and contact info. All Minor

    DOCUMENT INFORMATION

    Title:

    U.S. Competitiveness in Licensing

    Document number

    10.05.004.000

    Revision number

    2

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    Next review date:

    3/31/2024

    Policy Area:

    Licensing

    RPM Section (home)

    Information Management

    RPM Section (cross-reference)

    None

    Functional Division

    Intellectual Property Office

    Prior reference information (optional)


    Source Requirements Documents

    Contract 31, Clause I.138, DEAR 970.5227-3, Technology Transfer Mission (AUG 2019) [SC alternate APR 2018] (prev. I.092)

    Implementing Documents

    None

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