• How the Tech Transfer Process Works
• What You Need to Know and Do
• Industry-Lab Research Opportunities
• Transferring Technology to the Marketplace
• FAQ on Tech Transfer Process
• Entrepreneurial Resources
• Forms

WHAT YOU NEED TO KNOW AND DO

• What constitutes an invention
  
• When to disclose an invention
  
• How to disclose – Disclosure forms
  
• Who is an inventor
  
• Software

What constitutes an invention
If you feel you have made a discovery at the Lab, or developed computer code with potential commercial application, complete an Invention Disclosure Form or Software Invention Disclosure Form. If you have developed software, go to Software for more information. DOE rules require that all Lab inventions including mask works and software be disclosed!

An invention may be a new and useful process, machine, article of manufacture, composition of matter, or an improvement on one of the above. It must be:

• Novel - unique or different from what has been previously published, patented, or practiced;
  
• Useful - serve some purpose; and
  
• Non-obvious - sufficiently different from what has come before it that it would not be obvious to someone with skill in the field.

back to top

When to disclose an invention
The ideal time to disclose an invention to the Patent group is after it has been "actually reduced to practice" and before it has been published or publicly presented. "Actual reduction to practice" means that you have built a physical model demonstrating that the invention works for its intended purpose. The Patent group may file a complete patent application if your invention is "constructively reduced to practice." This means that based on the patent application for your invention, someone with ordinary skill in your field would be able to build and use the invention without undue experimentation. Even if your invention is not reduced to practice, you should disclose it before any publication or presentation that describes its core concepts.

If you disclose an invention before it has been published or publicly presented (via the internet, a talk, poster, or any other means of communication), there is an opportunity to obtain foreign patent rights as well as U.S. rights. You must also disclose before the invention has been put in use, other than for testing or development, or foreign rights are lost. The opportunity to obtain patent rights in the U.S. ends one year from the first date of publication or public presentation describing the invention or first production use. The opportunity to obtain foreign patent rights ends immediately upon the first date of publication or public presentation describing the invention or first production use. More on patents.

back to top

How to disclose an invention – Disclosure Form
Once your invention has been reduced to practice, complete an Invention Disclosure Form and submit it to the Patent group, Building 90B, MS-90B0104, x7058. If you have any questions, call the Patent group at x7058.

Who is an inventor
Unlike the decision about who gets credit for a publication, determining who is named as an inventor on a patent is a legal decision rather than a choice made among participants. Only those individual(s) who furnish a new idea used in the invention can be named as inventors. An inventor is someone who first conceives of the invention in sufficient detail that someone skilled in the art could reproduce the invention from that information. If two or more people have a share in coming up with the ideas forming the invention, they are joint inventors. On the other hand, if one of those people provides all of the ideas for the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor. back to top

Software
Software needs to be disclosed too! Complete the Software Disclosure form and submit it to the Patent group, Building 90B, MS-90B0104, x 7058. Even if you only plan to share the software with other academic institutions, the Technology Transfer department will provide a license agreement to protect you and the Lab from liability.

Generally, software should be disclosed when it is three months from being complete or as soon thereafter as possible. Software must be disclosed before you can distribute it to anyone outside of LBNL or DOE.

When writing computer code, try to avoid polluting the code with software that was written outside of the Lab, such as freeware, open source code, shareware, and especially, commercial packages. Using non-LBNL code in your software without a written license giving you permission to do so can make it difficult or impossible to distribute your software outside the lab.

If your project does require that you incorporate third party software, be sure to document where you obtained the code and what legal terms apply to its use, e.g. a printout of the software license. You should also keep records of who works on the code and what funding supports its development.

Prior to distribution, the Technology Transfer staff will review the legal agreements and determine what rights the Lab has to distribute the software.

Software Licensing Associate is available at x 6467 or write to us at ttd@lbl.gov to discuss software licensing. If you think you might want to distribute your software outside of the Lab, please call him.