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| New Employees and Guests - Important Information you need to know Transferring Technology To the Marketplace Spring 2006 Series Frequently Asked Questions on Tech Transfer Process HOW THE TECH TRANSFER LICENSING PROCESS WORKS The following provides a brief overview of how the technology transfer licensing process works. For more detail please see What You Need to Know and Do.
The transfer of technology from the Lab to industry begins with the invention of a process, technique, material, piece of equipment, or development of software. For information on software , see below. Researchers are encouraged to contact the Technology Transfer Department (TTD) to discuss any research that may have produced an invention. Also see What Constitutes an Invention. The next step is for Lab researchers to disclose the invention to the Patent group, as required by DOE Contract 98. The inventor submits a brief Disclosure and Record of Invention Form, which includes a description of the technology and a list of inventors. Disclosures are then assigned to a TTD licensing professional. For more information see: When to disclose an invention . back to top If the invention is a piece of software that has been written at the lab, there is a similar, but slightly different process. The developer first submits a brief Software Disclosure and Abstract Form to the Patent group. This creates a record of the software development, including the names of the developers and a brief description of the software. Licensing staff will then meet with the developer to devise a strategy for disseminating the software that best meets the needs of the research agenda, potential users, and the Lab. In many cases, the Lab will seek permission from DOE to assert its copyright and then register it, a process that is far less complicated than obtaining a patent. For more information go to Software. back to top A senior licensing associate, sometimes in conjunction with a patent attorney, will contact the inventor(s) to assess the technology and determine whether or not the Lab should seek patent protection. Issues that will be considered are:
Berkeley Lab does not file patent applications for all invention disclosures it receives due to the high cost per application: $10,000 - $20,000. The Lab may first file a provisional patent application, which is less costly than a regular patent application and allows the Lab a year in which to decide whether to convert the provisional application to a more detailed, costly, regular patent application. During this year the technology will be assessed and may be promoted to gauge the current level of industry interest. After a U.S. patent issues, patent maintenance fees are paid every 4 years, and if a technology has not yet been licensed at these juntures, it may be reevaluated. The Lab prefers to have identified a potential licensee before filing a regular application. However, sometimes the commercial promise or value of the invention justifies filing a regular application even when we have not yet identified a potential licensee. Industry often considers intellectual property (IP) protection, such as patents and copyrights, to be a prerequisite to investing in technology development. Even after an invention has been proven, a significant investment must be made in testing and development, production engineering, manufacturing, and marketing, before a product will generate revenue. Having IP protection protects the company’s investment by preventing others from using the technology. The Lab may also decide to file for foreign patents. Unlike U.S. patent policy, foreign rights are forfeited if an invention is publicly disclosed before a first patent filing (in any country) has been made. For more information on publications, public disclosure, and protecting intellectual property see: Publish, Present, and Protect your Invention. Often companies that are interested in licensing a technology will want to talk to the inventors to gain additional information. An inventor can protect his or her invention by requiring anyone outside the Lab with whom s/he discusses it to sign a non-disclosure agreement (NDA). If you want to discuss an invention with someone outside the Lab, contact the TTD at x 6467 for assistance arranging an NDA agreement. Click here to see a sample NDA form. back to top Once the preliminary decision to protect the technology has been made, and sometimes once a regular patent has already been filed or obtained, Technology Transfer's marketing group promotes the technology with these goals:
The marketing group highly values suggestions from inventors regarding companies or contacts to be approached. A significant percentage of our licensees have been identified by LBNL inventors. Invention: Once a company has declared interest in licensing a Lab technology, the Tech Transfer licensing staff evaluates whether the company is likely to successfully develop the technology and bring it to market. A desirable licensee is able to marshal the requisite financial, R & D, manufacturing, marketing, and managerial capabilities and commitment. A capable and qualified licensee is critical to ensuring that technologies developed at the Lab are successfully commercialized and that the public ultimately benefits from these innovations. Once a company is found to possess the necessary capabilities, the licensing staff negotiates a licensing agreement. Different inventions require different licensing strategies. For example, a common strategy for a new scientific tool likely to be widely used is to license it on a non-exclusive basis (e.g. to more than one company). In contrast, an invention that requires a significant investment to bring it to market is typically exclusively licensed to a single company. Licenses may also be exclusive or non-exclusive for a particular field of use or geographic region. The signing of a license agreement is the beginning of a long term relationship. The licensee's performance is monitored by the TTD for the duration of the license and the licensee submits periodic financial and development reports to the TTD. See Licensing for more information. Other types of IP: In addition to handling inventions and software, the Technology Transfer Department handles the licensing of other types of intellectual property. Those most commonly produced at the Lab include mask works for computer chips and books. Mask works should be disclosed like other inventions. If you have written a book and intend to publish it under a royalty bearing contract, contact the TTD at x6467 for assistance with the contracting process. 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). 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. The revenue generated from any type of license is first applied towards reimbursing the costs of intellectual property protection, such as patenting costs or copyright registration fees. For inventions disclosed after September 30, 1997, 35% of the net income is paid to the inventors, 15% goes to the originating division for research, and 50% is used to support Lab research via the central research pool. Inventor royalties earned during each fiscal year are distributed in February. For more on royalties see RPM section 5.05. back to top
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