POLICY

A. Purpose

Every employee and affiliate must report any inventions invented to the Intellectual Property Office (IPO) so that IPO 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

1. Berkeley Lab requires all employees and affiliates to report inventions to IPO 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.
2. Every Berkeley Lab employee or affiliate must promptly report every invention that he/she invents to IPO, 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 IPO.
3. 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
4. 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 Records Management Office for storage according to the Archive and Records Office's retention policy for Laboratory notebooks.
5. IPO must report each invention to DOE or any other required third party (such as industry research sponsors).
6. IPO 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 IPO 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

F. Definitions/Acronyms

G. Recordkeeping Requirements

The Intellectual Property Office maintains a record of all Records of Invention.

H. Implementing Documents

I. Contact Information

Licensing Manager
Intellectual Property Office
[email protected]

J. Revision History

DOCUMENT INFORMATION

Source Requirements Documents

• University of California - Policy on Inventions, Patents, and Innovation Transfer 
•  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)