U.S. Competitiveness in Licensing

Title:	U.S. Competitiveness in Licensing
Publication date:	3/31/2021
Effective date:	3/31/2021

BRIEF

Policy Summary

Berkeley Lab's Intellectual Property Office (IPO) department must make intellectual-property licensing and assignment decisions that give preference to licensees who provide economic and technological benefits to the U.S. domestic economy.

Who Should Read This Policy

Berkeley Lab researchers and IPO staff

To Read the Full Policy, Go To:

The POLICY tab on this wiki page

Contact Information

Licensing Manager
Intellectual Property Office
[email protected]

Title:	U.S. Competitiveness in Licensing
Publication date:	3/31/2021
Effective date:	3/31/2021

POLICY

A. Purpose

This policy describes intellectual property licensing requirements at Lawrence Berkeley National Laboratory (Berkeley Lab).

B. Persons Affected

Berkeley Lab researchers and Intellectual Property Office (IPO) staff.

C. Exceptions

Berkeley 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 Statement

Berkeley Lab supports the U.S. domestic economy through its intellectual property licensing program.

Some of the factors IPO considers in its licensing program include:
1. 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.
2. 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.
3. 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 Responsibilities

Role	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/Acronyms

Term	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 Requirements

IPO Licensing keeps records of its consideration of U.S. industrial competitiveness factors as well as copies of any required DOE approvals.

H. Implementing Documents

None

I. Contact Information