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idReporting Inventions and Electing Title
Card
defaulttrue
labelBrief
titleBrief

Title:

Reporting Inventions and Electing Title

Publication date:

4/1/2021

Effective date:

3/12/2007

BRIEF

Policy Summary

Intellectual Property Office (IPO) 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

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

To Read the Full Policy, Go To:

The POLICY tab on this wiki page

Contact Information

Licensing Manager

Intellectual Property Office
[email protected]

Card
labelPolicy
titlePolicy

Title:

Reporting Inventions and Electing Title

Publication date:

4/1/2021

Effective date:

3/12/2007

POLICY

A. Purpose

The Intellectual Property Office (IPO) 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

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

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 IPO).

D. Policy Statement

  1. IPO 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. IPO 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 IPO elects title to an invention, IPO 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

IPO ROI Intake

Sends a written report of a new invention to DOE

IPO Patent ParalegalElects title to invention if a patent application to be filed

IPO Licensing Staff

Decides whether to elect title to an invention

IPO 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 include 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

IPO

Intellectual Property Office

G. Recordkeeping Requirements

IPO 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

I. Contact Information

Licensing Manager

Intellectual Property Office
[email protected]

J. Revision History
Anchor
_GoBack
_GoBack

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

12/17/2020
D. SoustinUpdated Contract 31 I clause numbers as per mod 1105Source Requirement DocumentsEditorial
4/1/20211.1R. CarringtonPeriodic review. Updated office names and contact info.AllEditorial
Card
labelDocument Information
titleDocument Information

DOCUMENT INFORMATION

Title:

Reporting Inventions and Electing Title

Document number

10.05.005.000

Revision number

1.1

Publication date:

4/1/2021

Effective date:

3/12/2007

Next review date:

4/1/2026

Policy area:

Licensing

RPM Section (home)

Information Management

RPM Section (Cross reference)

None

Functional area

IPO

Prior reference information (optional)


Source Requirements Documents

Contract 31, Clause I.143, DEAR 970.5227-10, Patent Rights - Management and Operating Contracts, Nonprofit Organization or Small Business Firm Contractor (AUG 2002) [SC alternate APR 2018] (prev. I.097)

Implementing Documents

Document number

Title

Type

N/A

Record of Invention (ROI)

Form

buildershow-showif
grouprpm2-admins
Card
labelAdditional Information
titleAdditional Information

ADDITIONAL INFORMATION

Title:

Reporting Inventions and Electing Title

Document number

10.05.005.000

Revision number

1.1

Publication date:

4/1/2021

Effective date:

3/12/2007

Next review date:

4/1/2026

Policy area:

Licensing

RPM Section (home)

Information Management

RPM Section (Cross reference)

Section 5.03(d)

Functional area

IPO

Author name/contact info

Heidi Clark, [email protected]
Robin Chiang, [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

n/a



Inputs from more than one Policy Area?

n/a

List additional Policy Areas & contacts

n/a



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}





Labels, Tags:

ROI, invention, disclosure, inventor, patent, IP, intellectual property, tech transfer, commercialization, licensing, elect, title,

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

None

Implementing Documents restricted to department/functional use

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

Document number

Title