§5.03
Patents



Revised 03/08
Links updated 06/11

  1. Employee Obligations
  2. Procedures
    1. Invention Recording and Reporting
    2. Publication Clearances
  3. Publication-Related Issues
    1. Impact on Patent Rights of Prior Electronic Publication
    2. E-mail Messages as Publications
  4. Additional Patent Policies

A.  EMPLOYEE OBLIGATIONS

  1. The DOE/LBNL Contract provides the United States government with certain rights in inventions made by Lawrence Berkeley National Laboratory (Berkeley Lab) employees or guests at the Laboratory, or by anyone using Laboratory facilities or Laboratory resources.  The Contract also provides the University of California the right to elect title to (i.e., to take full ownership of) the invention.

  2. To protect the government interest, the Contract requires that Berkeley Lab report all inventions made under the Contract to DOE patent counsel and that all information produced at the Laboratory be cleared for possible inventions before publication.

  3. Employees and guests are obligated to provide assistance to Technology Transfer and Intellectual Property Management (Technology Transfer) in evaluation and transfer of the technologies (typically inventions or software) that they have developed.

B.  PROCEDURES

1.  Invention Recording and Reporting

  1. It is the inventor's responsibility to report all inventions promptly to Berkeley Lab Technology Transfer and Intellectual Property Management within 6 months of conception or first actual reduction to practice, whichever occurs first. The form to be used to report inventions, the Record of Invention (ROI) form, is available at http://www.lbl.gov/Tech-Transfer/researchers/forms.html. This obligation is stated in the Intellectual Property Acknowledgment, which is signed by all employees and guests when they begin working at Berkeley Lab.
  1. The protocols for experiments, results of experiments, and/or other data that document inventions referred to in Section (B)(1)(a), above, must be kept in a permanently bound, ledger-type notebook with numbered pages. The specific procedure recommended for recording data describing original research and development work that leads to invention is on the Web at
    http://www.lbl.gov/Tech-Transfer/researchers/needtoknow.html.
  1. All notebooks and equivalent records of Berkeley Lab research are the property of the United States government. Researchers may make copies for their own personal records. These records may be maintained in the appropriate group as long as necessary and then forwarded to Archives and Records for storage.
  1. Technology Transfer and Intellectual Property Management will report the invention to DOE and any others to whom there is an obligation to report, and will evaluate the invention for commercialization potential.

2.  Publication Clearances

  1. All publications, whether print or electronic, describing work by Berkeley Lab employees and guests or done with Berkeley Lab facilities must be reviewed and cleared by Technology Transfer before they can be sent outside the Laboratory, except for restricted disclosure to certain government and University of California personnel, or if covered by a confidentiality agreement signed by Technology Transfer (see RPM §5.07 (Disclosure of Laboratory Proprietary Information).

  2. Publications that must be reviewed for patent clearance (to determine whether any patentable inventions are described) include not only Laboratory written reports, but also the following, whether made public in written, oral, visual, or electronic form:
    1. Articles to be submitted to scientific or professional journals
    2. Oral and written conference presentations (e.g., slides or viewgraphs) or posters
    3. Abstracts
    4. Ph.D. theses
    5. Any other material that could contain invention information

  3. The purpose of patent review is to ensure that all inventions have been reported and if appropriate, protected for future commercialization. Possible inventions should be reported to Technology Transfer on an ROI form (see Section (B)(1)(a) above) before the material is ready for publication so that patent rights will not be inadvertently lost. The review process is described at http://www.lbl.gov/Tech-Transfer/researchers/pre_pub_review.html.

C.  PUBLICATION-RELATED ISSUES

1.  Impact on Patent Rights of Prior Electronic Publication

A prior electronic publication will bar an inventor from receiving a patent outside the United States just as a print publication will. Nothing can be done to recover that patent opportunity. Inside the United States, a patent application can still be filed if it is done within one year after the publication date. After this one-year period expires, no patent may be filed for that invention.

2.  E-mail Messages as Publications

If an e-mail message is a confidential exchange between two individuals, the message is not considered to be a publication. The status of the message is less certain, however, if the communication is to a group or to an individual who forwards the message to a group. As sharing or forwarding e-mail is so easy, it is not advisable to convey information regarding an invention via e-mail without checking with a patent practitioner in Technology Transfer.  If necessary, Technology Transfer can provide a confidentiality agreement (also known as a nondisclosure agreement) to allow sharing the information without it becoming a publication.

D.  ADDITIONAL PATENT POLICIES

The patent policy described above applies to research by, and writings of, Laboratory employees. The following paragraphs contain additional patent review requirements: