Reporting Inventions and Electing Title

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]

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

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.
IPO has two years, from the date a new invention was reported to DOE, to elect title to the invention in writing from DOE.
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.
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 Paralegal	Elects 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