The following information will be of particular interest to people who have submitted an invention disclosure (“Record of Invention”) to the LBNL Patent Department.  It is covers frequently asked questions about “what happens next.

Below are the following topics:

• The Patent Process

• Inventorship

• What is a “Lead inventor”?

• Public Disclosure

• Conflict of Interest

The Patent Process

Your disclosure and record of invention is NOT a patent or a patent application.  The record of invention must be developed into a more complete document and filed with the United States Patent and Trademark Office (USPTO) before your invention is “patent pending.”  This filing may take one of two forms:  a Provisional Patent Application or a Regular Patent Application.  A Provisional Patent Application is filed at the USPTO and  confers “patent pending” status for one year.  However, this document is never examined by the USPTO and can never become an issued patent.  The formal requirements for a Provisional Patent Application are minimal – in fact, just the Record of Invention can be filed as a Provisional Patent Application.  The problem is that the protection afforded by the Provisional Patent Application is in direct proportion to the quality of the description that is in the Provisional.  That is, if there are alternatives to the original structure or process, these should be described in order to get a broader patent at the end of the day.

A Regular Patent Application is a formal legal document that describes in detail the best mode of making and using the invention. It concludes with “claims,” which are the legal descriptions of the boundaries of the patent protection.  The patent application is a complex document that must be written by a patent attorney or agent.  Your role, as an inventor, is to provide the scientific and technical input to the attorney in order to make sure that the invention is fully described and claimed.  Also, you have a duty to disclose to the attorney any prior publications or work by others relating to the invention.  The attorney in turn has a duty to disclose this to the USPTO.

A Regular Patent Application is examined at the USPTO and, if warranted, issues as a U.S. Patent.  This examination and issuance process usually takes about three years from the date of filing, but there is no rule governing the time that may elapse. 

Inventorship

The Disclosure and Record Invention form that you completed asks for the names of the “contributors.” This is because, legally, inventorship is defined by a set of “claims” at the end of the “specification” describing the invention.  Most of the inventions reported at LBNL are joint inventions, that is, more than one person made them.  Inventorship is determined by the act of conception. Inventors are those who actually had the idea for the invention and determined the necessary steps, materials or structures that would make the idea work.  Joint inventors do not have to have actually worked side by side or contributed to every aspect of the invention.  However, there must have been some intellectual contribution from a person in order for him or her to be an inventor.  An author is not necessarily an inventor.  One who did the work in the lab is not necessarily the inventor.  And, one who supplied money or resources to the project is not necessarily an inventor.  The patent department will determine legal inventorship at the time the regular patent application is filed – we only ask that you use your best judgment in determining who should be named as contributors on the Record of Invention.

What is a Lead inventor?

There are typically multiple inventors named on a Record of Invention.  These are called “contributors” on the form, because actual inventorship is determined at the time of filing a patent application (see Inventorship, above).  For simplicity’s sake, the patent department will contact one individual to work with in preparing the patent application. This is the “lead inventor.”  We expect and assume that the “lead” inventor will keep his or her co-inventors appropriately apprised and involved in the application process.  This is simply a pragmatic approach to managing the workflow involved in preparing a patent application.  For example, there will be multiple draft applications prepared, with various questions posed by the attorney.  These typically will be directed to one person, who should consult with his or her colleagues as necessary and appropriate.  Upon request, we will copy everything to everybody, or tailor our procedures to meet your needs.

Legally, all inventors share equally in the patent.

Public Disclosure

Any public disclosure of your invention prior to the date of filing a Provisional or Regular patent application will eliminate the possibility of patent protection in all countries except for the U.S. and Canada, and possibly Japan (depending on the circumstances).  ONE Year after any public disclosure, all patent rights are barred.

Conflict of Interest

LBNL and the University of California have strict policies regarding conflicts of interest.  In the patent setting, these policies can be invoked during licensing negotiations. Once a contact is made with a company that you have a financial interest in, there are certain disclosures that you must make.  While a member of the LBNL Technology Transfer Department undertakes the actual licensing negotiation, you, as an inventor, may be called upon to participate in the licensing process because of your expertise relating to the invention.  You will therefore have to fill out a disclosure of economic interest and may be excluded from any licensing discussions pertaining to a company in which you have a financial interest (including, for example, companies that you are a paid consultant for).  PLEASE SEE THE PROCESS FOR CONFLICT OF INTEREST REVIEW FOR LICENSING AT BERKELEY LAB – CLICK HERE TO VIEW.