Frequently Asked Questions on the Technology Transfer Process
Is a Record of Invention the same as a patent?
No. A Record of Invention is an internal Lab document written by the inventor and submitted to the Lab’s Patent group.Once your ROI has been reviewed by the Tech Transfer Department, a staff member will contact you and a decision will be made as to whether or not a patent application will be filed. Simply submitting a ROI does not protect intellectual property rights. A patent application is a detailed document prepared by the Lab’s Patent group and filed with the U.S. Patent and Trademark Office (USPTO).
When should I submit a Record of Invention (ROI)?
The ideal time is after you have built a physical model demonstrating that the invention works and before it has been published or publicly presented. Even if your invention is not reduced to practice, to fully protect U. S. and foreign patent rights you should submit an ROI before any publication or presentation that describes its core concepts. A software disclosure and abstract should be submitted a few months before completion of the software or as soon thereafter as possible. Software must be formally reported before you distribute it to anyone outside of LBNL or DOE, even if it is to be distributed for free.
Are publishing and getting a patent both possible for a given invention?
Yes, publishing and patenting are completely compatible if the Lab files for patent protection before you first publish. Contact Tech Transfer before you publish or speak publicly about an invention so that we can take appropriate action to protect it. Technology transfer involves moving an invention or software from the Lab to the marketplace, usually by licensing it to a company that further develops the invention and commercializes it.
What might I inadvertently do that would jeopardize getting a patent?
Some or all patent rights may be lost if you make a public disclosure before Tech Transfer files a patent application. A disclosure includes any publicly available written, electronic, or oral description of the invention. Internal disclosures to Lab employees are fine. Please contact the Patent Group at x7058 for advice before you publish or present.
What is a Non-Disclosure Agreement?
The Tech Transfer Department can arrange an Non-Disclosure Agreement (NDA) that allows you to have a confidential discussion about your technology with non-Lab personnel or lets you receive proprietary information from a third party. Contact Parul Jain at 495-2306 to arrange an NDA agreement.
Why does the Lab patent inventions?
We protect inventions for a number of reasons. It makes the invention more attractive to licensees because they are more likely to recoup their R&D costs by securing rights to the technology for some time. Patenting also ensures that the Lab and inventors receive credit for the invention and a share of any income it generates.
How do you decide which inventions to patent?
Patenting in no way reflects on the scientific merit of an idea. The primary criterion for patenting is the likelihood of successful commercialization. Given a limited budget, the process for determining which inventions get patented is highly competitive.
What if I have a great idea and want to start a company?
What role do inventors play in choosing a licensee?
In order to prevent a conflict of interest, the inventor does not determine who will license a given technology. However, Tech Transfer often welcomes inventor's identification of potential licensees and also consults with inventors in assessing the capabilities of potential licensees.