Title: | U.S. Competitiveness in Licensing | Publication date: | 3/31/2021 | Effective date: | 3/31/2021 |
POLICYA. PurposeThis policy describes intellectual property licensing requirements at Lawrence Berkeley National Laboratory (Berkeley Lab). B. Persons AffectedBerkeley Lab researchers and Intellectual Property Office (IPO) staff. C. ExceptionsBerkeley 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 StatementBerkeley Lab supports the U.S. domestic economy through its intellectual property licensing program. - Some of the factors IPO considers in its licensing program include:
- 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.
- 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.
- 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
- 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.
- 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 ResponsibilitiesRole | 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/AcronymsTerm | 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 RequirementsIPO Licensing keeps records of its consideration of U.S. industrial competitiveness factors as well as copies of any required DOE approvals. H. Implementing DocumentsNone Licensing Manager
Intellectual Property Office
[email protected] J. Revision HistoryDate | 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 |
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