At times, the Laboratory needs to, or finds it useful to, disclose unpublished information relating to technological and scientific developments, or to transfer tangible research material. Examples of tangible research material include cell lines, chemical compounds, and source codes for software. Such disclosures or transfers are appropriate when they enable the recipient of the disclosures or transfers to evaluate the information/material's potential commercial utility or the recipient's interest in obtaining a commercial license from Berkeley Lab; to replicate, reproduce, evaluate, or confirm Berkeley Lab's research effort; or to do research furthering Berkeley Lab's programmatic goals. Disclosure of Laboratory proprietary information for personal gain is prohibited. See Paragraph (B) (Privileged Information) below.
Laboratory staff must observe the following procedures when the Laboratory transfers proprietary information or tangible research material to third parties (other than appropriate University of California staff or DOE). These procedures are established to enable the Laboratory to comply with its obligation under the DOE/LBNL Contract to maintain the patentability of inventions, to foster appropriate technology transfer, and to avoid liability for others' use or misuse of Laboratory information or material.
A Laboratory researcher wishing to transfer proprietary information or material must contact the Technology Transfer Department to prepare and sign a nondisclosure agreement or material transfer agreement, as appropriate. The Technology Transfer Department may also prepare agreements for mutual disclosure of proprietary information or transfer of material. The researcher may not transfer the Laboratory proprietary information or material before such an agreement is signed by both the Laboratory and the recipient.
At a minimum, any information the Laboratory discloses under agreement must be prominently marked as “proprietary” or “confidential.” If the Laboratory researcher (i.e., the discloser) wishes to transfer proprietary information or material, and chooses to disclose the information orally, he or she must first inform his or her audience that the forthcoming information is confidential. Some nondisclosure agreements also require that confidential oral presentations be summarized, marked as confidential, and transmitted to the receiver within 15 to 30 days. The researcher must comply with any additional requirements contained in the nondisclosure agreement.
Any tangible research material that a Laboratory researcher transfers must be appropriately labeled and must include instructions for handling, as necessary for safe use. All materials must be shipped through the Laboratory's Shipping and Receiving Department to ensure compliance with Export Control and other applicable laws.
Under certain subcontracts, the University's full rights to intellectual property may be impaired if proprietary information or material is transferred to a subcontractor under the subcontract without appropriate restrictive markings. If a Laboratory researcher anticipates transferring Laboratory proprietary information or material to a Laboratory subcontractor, the researcher must inform Procurement about this intention and take steps necessary under the subcontract to mark the information or material.
Failure to reasonably safeguard Laboratory proprietary information and/or follow the procedures listed above may constitute a serious violation of professional
Examples of standard form agreements are available for inspection at the LBNL Technology Transfer Web site.