Patents – Record of Invention Policy

Title:	Patents – Record of Invention Policy
Publication date:	11/27/2012
Effective date:	2/1/2008

BRIEF

Policy Summary

This policy describes the requirement that every employee and affiliate of Berkeley Lab must report all inventions to Technology Transfer and Intellectual Property Management (TTIPM) so that TTIPM may assess the commercial/licensing potential of the technologies and protect Department of Energy (DOE) interest in the inventions.

Who Should Read This Policy

All Berkeley Lab employees (especially researchers and technical staff) and affiliates, 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

Patents
Technology Transfer and Intellectual Property Management
[email protected]

Title:	Patents – Record of Invention Policy
Publication date:	11/27/2012
Effective date:	2/1/2008

POLICY

A. Purpose

Every employee and affiliate must report any inventions invented to Technology Transfer and Intellectual Property Management (TTIPM) so that TTIPM may assess the commercial/licensing potential of the technologies and protect Department of Energy (DOE) interest in the inventions.

B. Persons Affected

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

C. Exceptions

None

D. Policy Statement

Berkeley Lab requires all employees and affiliates to report inventions to TTIPM using the Record of Invention (ROI) form whenever inventions (a) are invented by employees of Berkeley Lab, (b) are invented by Berkeley Lab employees while working for an outside entity, such as in a consulting capacity, (c) arose from the utilization use of any Berkeley Lab or University of California research facility, or (d) arose from the inventor's receipt of gift, grant, or contract research funds through Berkeley Lab or the University of California.
Every Berkeley Lab employee or affiliate must promptly report every invention that he/she invents to TTIPM, at most within six months of the conception or first reduction to practice, whichever occurs first. The preferred time of reporting is while preparing the first related manuscript for publication or presentation for an outside conference, but should be at least several weeks prior to first public disclosure. This report should use the Record of Invention form provided by TTIPM.
The inventor must maintain a notebook describing the invention's conception and reduction to practice. The notebook must contain protocols for the experiments, results of the experiments, and/or other data that document the invention. The notebook must be bound and have numbered pages. Alternatively, electronic notebooks with a secure log-in and date stamp are also permissible. Each page of the inventor's notebook must be reviewed, dated, and signed by a person who is knowledgeable in the technology field of the invention
All notebooks and records of Berkeley Lab research are the property of the U.S. government. Researchers may make copies for their own personal records. The notebooks and records must be maintained in the appropriate laboratory group or forwarded to the Archives and Records Office for storage according to the Archive and Records Office's retention policy for Laboratory notebooks.
TTIPM must report each invention to DOE or any other required third party (such as industry research sponsors).
TTIPM will assess the commercial/licensing potential of each invention, and decide whether to protect it by a patent or to protect it as any other appropriate intellectual property, in order thereafter to license the invention to an outside party so that the public may derive the maximum benefit of the technology and that Berkeley Lab may obtain a fair compensation. If TTIPM declines to protect an invention, DOE may decide to protect it by a patent. If DOE also declines to protect it by a patent, the inventor may request DOE for permission to take ownership of the invention for the purpose of commercializing the technology. If DOE waives title to the inventor, the inventor assumes certain obligations imposed by DOE.

E. Roles and Responsibilities

Role	Responsibility
Inventor	Submits a completed Record of Invention form within the time frame specified in the policy statement
Technology Transfer and Intellectual Property Management	Notifies DOE of each new invention within two months of the receipt of a Record of Invention (ROI) Maintains records of the ROIs

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 be a patentable invention.
Inventor	A person who conceived or contributed to the conception of an invention
Record of Invention Form	The form the inventor(s) completes and submits to Technology Transfer and Intellectual Property Management to report an 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

G. Recordkeeping Requirements

Technology Transfer and Intellectual Property Management maintains a record of all Records of Invention.

H. Implementing Documents

Document number	Title	Type
N/A	Record of Invention Form	Form

I. Contact Information