• 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

Frequently Asked Questions on 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. A patent application is a detailed document written by the Lab’s Patent group and filed with the U.S. Patent and Trademark Offi ce (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 ROI should be submitted a few months before completion of the software or as soon thereafter as possible. Software must be formally reported through an ROI before you distribute it to anyone outside of LBNL or DOE, even if 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 publically about an invention so that we can take appropriate action to protect it. Technology transfer involves moving an invention or
piece of 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?

You can lose the chance to patent if you make a public disclosure before we file a patent application. A disclosure includes any publically available written, electronic, or oral description of the invention. Internal disclosures to Lab employees are fine. Please contact Tech Transfer or the LBNL Patent group for advice before you publish or present.

What is a Non-Disclosure Agreement?

The Tech Transfer Department can arrange a 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.

Why does the Lab patent inventions?

We protect intellectual property 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 what gets patented is highly competitive.

What if I have a great idea and want to start a company?

You must first file a Record of Invention, as this starts the process. For more information on this topic, please see the “For LBNL Researchers” section of this website.

Do inventors get a say in who the Lab licenses an invention to?

In order to prevent a conflict of interest, the inventor does not determine who will license a given technology. However, Technology Transfer often consults with inventors in assessing the capabilities of potential licensees.