• 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

At the Lab we protect intellectual property (inventions) for a number of reasons. Primarily, it makes the invention more attractive to companies because they are more willing to invest in early-stage technology if they know that, should they succeed in commercializing it, they will have exclusive rights to the technology for some time. If an invention is patented, it is more likely to reach and benefit the public who funded the research through tax dollars. Patenting also ensures that the Lab and inventors receive credit for the invention and a fair return for any profits it may generate.

There are two types of intellectual property protection frequently used at the Lab:

• Patents grant a limited monopoly permitting the owner of the patent to prohibit others from using the invention.
  
• Copyright protects the original expression of an idea.

PATENTS

U. S. Patents
The U. S. patent office grants a patent if it determines that the invention is "novel, non-obvious, and useful." Patents are a monopoly granted by the U. S. government permitting the owner of the patent to prohibit others from using the claimed invention. For patent applications filed after June 8, 1995, the patent term is nominally 20 years from the filing date. The Patent group is responsible for preparing and submitting patent applications to protect Lab inventions. A patent attorney will seek your input during this process to better understand the essence of your invention. The patent application will contain claims that describe precisely what is novel about the invention.

In a series of U. S. patent office actions and LBL responses to office actions, the patent examiner may reject a Lab claim, and the claims may be adjusted by our attorneys until the examiner is convinced that what is claimed is novel and non-obvious in relation to prior art.

Patents are costly to prepare and are submitted with a fee. Once a patent is issued, additional fees are due every four years, beginning three and a half years from the date of issue. The Technology Transfer Department may review patented Lab technologies when these payments come due to determine if it is in the best interest of the Lab to maintain the patent.

Provisional U. S. Patent Applications
A provisional patent application is a description of an invention that establishes a filing date for less cost and effort than filing a regular application It may or may not include claims drafted by the attorney. However, the provisional application must be converted to a regular U.S. patent application, with a complete set of claims, within one year or else the filing date established by the provisional will be lost.

Foreign Patents
Foreign patent applications must be filed within one year of the first filing of a patent application in any country.

See patents for more information. back to top

COPYRIGHT

Copyright protects an original expression of an idea. At the Lab, copyright is mostly used to protect written works such as journal articles, books, software, videos, scientific photos, and engineering drawings. Registering a copyright is not legally necessary because copyright is conveyed automatically upon the completion of a work. However, it is recommended for protection of any work that will receive commercial distribution, as it strengthens copyright protection. The process of obtaining copyright protection is much simpler and less costly than filing a patent.

If you have written a book and would like to publish it, contact the TTD at x6467 for assistance with the contracting process.

See more information on copyright.

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MATERIAL TRANSFER AGREEMENTS

Research materials that you produce may be transferred at no-cost for evaluation or for non-commercial research under a Material Transfer Agreement (MTA). See a sample MTA agreement here. They may also be licensed for a fee if they will be used for commercial purposes. If you have tangible research materials that you would like to transfer outside of the Lab, call the TTD at x 6467 for assistance. We can also assist you in obtaining non-commercially available research materials from other institutions.

PUBLISH, PRESENT, AND PROTECT YOUR INVENTION

The Patent group in the Technology Transfer Department (TTD) is committed to doing our work without interfering with or unnecessarily delaying academic publication. Publishing and obtaining a patent are compatible IF the inventor discloses an invention before or within a year after first publishing. Please contact the TTD before you publish so that we can take appropriate action to protect the invention.

Public disclosure, which starts the clock ticking for patent rights, is not confined to publications. Any written (poster or internet) or oral disclosure, even to a single person, may count as a public disclosure, unless the recipient agrees that the information was conveyed in confidence, i.e., under a Non Disclosure Agreement. Disclosures to Lab employees do not count as public disclosures. The Technology Transfer Department can arrange a Non Disclosure Agreement (NDA) that allows you to have a confidential conversation about your technology with non-Lab personnel.

In order to act as a patent barrier, a disclosure must be enabling. It must provide enough detail about the invention to enable someone who is "skilled in the art" to be able to reproduce the invention without undue experimentation. If it is not enabling, the disclosure is not a problem. Please check with the TTD at x 6467 to determine if a communication about your technology is likely to be seen as enabling.

Always check with the Technology Transfer office if you have questions about protecting your intellectual property.

For more information about LBL policies on patents see paragraph 5.03 of the Laboratory’s Regulations and Procedures manual. back to top