BRIEF

Policy Summary

All publications — whether written, oral, visual, or electronic — describing technical or scientific work by Lawrence Berkeley National Laboratory (Berkeley Lab) employees and affiliates or performed using Berkeley Lab resources and facilities must be reviewed prior to publication or public disclosure to identify Berkeley Lab inventions. Exceptions include disclosures to certain government and University of California personnel or entities covered by a nondisclosure agreement signed by the Intellectual Property Office (IPO).
Publications include written reports submitted to professional or scientific journals, oral and written conference presentations, abstracts, Ph.D. theses, and any other material presented that may contain patentable invention information.

Who Should Read This Policy

This policy applies to all employees and affiliates, especially researchers and other technical staff, including those who work part time or have a faculty appointment.

To Read the Full Policy, Go To:

The POLICY tab on this wiki page

Contact Information

Legal — Patent Counsel:
Stephen Glade, [email protected]
Robin Chiang, [email protected]

POLICY

A. Purpose

The purpose of review before publication is to (1) ensure that public disclosures of scientific or technical developments arising from Lawrence Berkeley National Laboratory (Berkley Lab) do not adversely affect the patent interests of Berkeley Lab, the University of California, or the U.S. Department of Energy (DOE); and (2) ensure that all inventions created under Berkeley Lab's contract with the DOE have been reported and, if appropriate, that patent rights are protected for future commercialization. This publication review is not intended to be the primary means to identify Berkeley Lab inventions. Possible inventions should be reported to the Intellectual Property Office (IPO) on a Record of Invention (ROI) form, currently accessible through the online IPO Innovation Portal, before the material is ready for publication so that patent rights are not adversely affected and can be protected.

B. Persons Affected

This policy applies to all employees and affiliates, especially researchers and other technical staff, including those who work part time or have a faculty appointment.

C. Exceptions

Disclosures to certain government and University of California personnel or entities covered by a nondisclosure agreement signed by the IPO.

D. Policy Statement

1. Prior to releasing or publishing information of a scientific or technical development arising from Berkeley Lab ("the Publication") to the public, the authors must review the Publication for any inventions. This review is performed using the criteria in the "Guidelines for Identifying an Invention" at the end of this policy statement. The following do not require publication review: (1) properly marked disclosures to federal government employees subject to the Trade Secrets Act and disclosures to University of California personnel; and (2) publications or presentations covered by a nondisclosure agreement signed by the IPO.
2. The types of documents that must be reviewed for any unreported patentable inventions include the following, whether made public in written, oral, visual, or electronic form:
   1. Manuscripts to be submitted to scientific or professional journals;
   2. Abstracts to be submitted to scientific or professional conferences or meetings;
   3. Oral and written conference presentations (e.g., slides or viewgraphs) or posters;
   4. Presentations to be made for job interviews;
   5. Master's and Ph.D. theses;
   6. Proposals and reports (unless properly marked) submitted to DOE personnel; and
   7. Any other material that might described as an invention.
3. When authors identify an invention in a Publication under this policy, they are to report the invention to the IPO. This reporting is performed through the Innovation Portal at https://ipo.lbl.gov/discloseinventions. Authors can seek assistance from Berkeley Lab Patent Counsel or a Technology Commercialization Associate through the IPO to determine if a Publication describes an invention. If the authors do not identify any inventions in the Publication, releasing or publishing the Publication may proceed.
4. Division directors and the IPO are responsible for ensuring division scientists and researchers are adequately informed of this policy.
5. The guidelines are as follows.

Guidelines for Identifying an Invention

1. Does the Publication describe a new device, method, or composition of matter, or does the Publication describe a device or method with a new operation, feature, or component? (An invention is NOT novel if it is known by the public before the filing date of a patent application.)
2. Did at least one Berkeley Lab employee or affiliate make a contribution to the device, method, or composition of matter? (Performing a known experiment on a device, method, or composition of matter designed and produced by another is not making a contribution).
3. Does the device, method, or composition of matter have a utility, e.g., an industrial application?
4. Is the device, method, or composition of matter not obvious to one of ordinary skill in the art? (An invention may be obvious to one of ordinary skill in the art if it can be demonstrated that at the time of the invention, the literature contained a teaching, suggestion, or motivation to combine known elements to arrive at the invention.)

If the answer is "yes" to all four questions, then an invention is potentially described by the Publication. The author may seek advice from Berkeley Lab Patent Counsel to identify whether there is an invention. Inventions must be reported to the IPO through submission to the Innovation Portal at https://ipo.lbl.gov/discloseinventions. If there is no invention, no further action is required.

NOTE: Please consult the Intellectual Property Office (IPO) before (a) publishing drawings, plans, or files (e.g., CAD drawings) of a device, if of commercial value, described in a publication or (b) publically offering such drawings, plans, or files for download or upon request in a publication, if of commercial value. Publishing or offering such drawings, plans, or files may decrease the value of potential patent protection that may be obtained for the device.

E. Roles and Responsibilities

F. Definitions/Acronyms

G. Recordkeeping Requirements

All records of invention disclosures are submitted and tracked online in the IPO Innovation Portal maintained by the IT Division and the IPO.

H. Implementing Documents

None.

I. Contact Information

Legal — Patent Counsel:
Stephen Glade, [email protected]
Robin Chiang, [email protected]

J. Revision History

DOCUMENT INFORMATION

Source Requirements Documents

U.S. Department of Energy (DOE) Contract No. DE-AC02-05CH11231, Clause I.143(c)(6), DEAR 970.5227 –10 Patent Rights – Management And Operating Contracts, Nonprofit Organization or Small Business Firm Contractor, Aug 2002 (SC Alternate Apr 2018)