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Deck of Cards
idU.S. Competitiveness in Licensing
Card
defaulttrue
labelBrief
titleBrief

Title:

U.S. Competitiveness in Licensing

Publication date:

11/27/2012

Effective date:

3/12/2007

BRIEF

Policy Summary

Berkeley Lab's Technology Transfer and Intellectual Property Management (TTIPM) department must make intellectual-property licensing and assignment decisions that give preference to third parties providing economic and technological benefits to the U.S. domestic economy.

Who Should Read This Policy

Berkeley Lab researchers and TTIPM staff

To Read the Full Policy, Go To:

The POLICY tab on this wiki page

Contact Information

Licensing Manager
Technology Transfer and Intellectual Property Management
[email protected]

Card
labelPolicy
titlePolicy

Title:

U.S. Competitiveness in Licensing

Publication date:

11/27/2012

Effective date:

3/12/2007

POLICY
Anchor
_GoBack
_GoBack

A. Purpose

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

B. Persons Affected

Berkeley Lab researchers and Technology Transfer and Intellectual Property Management (TTIPM) staff

C. Exceptions

Berkeley Lab can request approval from the Department of Energy (DOE) Contracting Officer if the U.S. competitive requirement is not met.

D. Policy Statement

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

  1. Some of the factors TTIPM 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.
    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, TTIPM 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, TTIPM will require that the licensees substantially manufacture in the U.S. licensed products for the U.S. market.

E. Roles and Responsibilities

Role

Responsibility

TTIPM Licensing Staff

  • Considers the U.S. industrial 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. industrial 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. industrial 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

TTIPM

Technology Transfer and Intellectual Property Management

G. Recordkeeping Requirements

TTIPM 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
Technology Transfer and Intellectual Property Management
[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. SoustinUpdated Contract 31 I clause numbers as per mod 1105Source Requirement DocumentsEditorial
Card
labelDocument Information
titleDocument Information

DOCUMENT INFORMATION

Title:

U.S. Competitiveness in Licensing

Document number

10.05.004.000

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 Division

Technology Transfer and Intellectual Property Management

Prior reference information (optional)

 


Source Requirements Documents

U.S. Department of Energy Contract No. DE-AC02-05CH11231Contract 31, Clause I.92(f) – 138, DEAR 970.5227-3, Technology Transfer Mission (Deviation July 2006), U.S. Industrial Competitiveness for Licensing and Assignments of Intellectual PropertyAUG 2019) [SC alternate APR 2018] (prev. I.092)

Implementing Documents

None

Builder show
grouprpm2-admins
 
Card
labelAdditional Information
titleAdditional Information

ADDITIONAL INFORMATION

Title:

U.S. Competitiveness in Licensing

Document number

10.05.004.000

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 Division

Technology Transfer and Intellectual Property Management

Author name/contact info

Heidi Clark, [email protected]
Viviana Wolinsky, [email protected]

 



Revision 0 publication date

1/2/2012

Retirement date

n/a

Prior reference information (optional)

 

 

 

 

 




Inputs from more than one Functional Area?

No

List additional Functional Areas & contacts

 




Inputs from more than one Policy Area?

No

List additional Policy Areas & contacts

 

 

 




30-day notification needed?

No

30-day start date

n/a

30-day end date

n/a

 

 



LDAP protected?

No

 

 



Need TABL reminders?

No

Frequency

n/a

Brief reminder text:

n/a

 

 



Approval Sheet for this revision received (date)
[Note: author is responsible]

 


Key labels/tags:

  • Licensing, U.S. Industrial Competitiveness, substantial U.S. manufacture requirement, economic benefit

New terms that need to be added to Glossary/Acronym list:

  • (list items not found and context (Policy Area name) – full definition would be included in Policy)

Implementing Documents restricted to department/functional use

(optional – these will be used for tracing between requirements and associated documents)

Document Number

Title

 

 

 

 






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