Process for Conflict of Interest Review for Licensing at Berkeley Lab
Berkeley Lab manages the intellectual property created by its employees in support of its research and technology transfer goals. The transfer of technology can include the licensing of inventions and other intellectual property and constitutes a business decision on the part of the University. The Lab manages conflict of interest and the appearance of conflict of interest in licensing in accordance with California law 1 and the Operating Contract for the Lab 2. The Laboratory employs a review process for every license, including a review of conflict of interest. The following describes the Lab process to manage potential conflicts of interest in licensing:
A. Licensing Professional Disqualification
Berkeley Lab Licensing Professionals (LPs) who determine that they have a disqualifying personal financial interest in licensing decisions for a specific case will excuse themselves from case management responsibilities by notifying their supervisor. The supervisor will re-assign the case to another LP who does not have a disqualifying personal financial interest.
B. Economic Disclosure by Inventors
Licensing Professionals at Berkeley Lab typically consult with one or more of the inventors of a technology during various points in the management of the case. Technical explanation of the invention, underlying science, background, or existing state of the art, etc. are not generally interpreted as influencing a business decision. However market evaluation, technology development plans, licensing terms, or licensee qualifications could be considered as influencing the business decision of the LP. The LP will determine the appropriate level of inventor involvement in licensing for a particular invention. In general, the role of the inventor in the licensing decision process will be kept to the minimum necessary to successfully achieve the Lab’s objectives in licensing inventions.
Because of the Conflict of Interest requirements for the Laboratory, an economic disclosure by the inventor is required once the LP begins negotiation of a license with a company. This disclosure is provided using form TT 100–LBNL. A copy of any positive disclosure will be provided to the LBNL Research Integrity Office. If sponsored research is a requirement of the license agreement, the LP will provide any positive dislcosure to the Sponsored Projects Office.
Economic disclosure is not required in the case of multiple non-exclusive licenses offered on identical terms to all licensees—such as with software licensed under a standard agreement.
C. Review of Licenses Based on Economic Disclosure
Depending on the level of economic interest an inventor has, the licensing arrangement is reviewed as follows:
- If there is no positive disclosure of economic interest, the disclosure statements so showing will be enclosed in the review package circulated for internal review and approval3.
- If there is a positive disclosure of economic interest in that one or more employee inventors is a principal in the company entering into an exclusive license or option for an exclusive license, the decision to enter into such a license must be approved by the DOE contracting officer as well as through the standard Lab process.
- If there is a positive disclosure of economic interest of some other sort (as identified on form TT 100-LBNL) the LP will so indicate on the Licensing Review checklist, and the reviewers will take this into account. To aid in the review and approval process the LP documents the involvement (if any) by any inventors, the basis for the business decision and any unusual business terms, and the efforts undertaken by the Lab to ensure fairness of opportunity in selecting a licensee. The memo will accompany the license, the licensing checklist, and the TT-100 form(s).
- The State of California Political Reform Act of 1974 (the Act). The Act requires public officials to “perform their duties in an impartial manner, free from bias caused by their own financial interests or the financial interests of persons who have supported them.” (Gov. Code, § 81001, subd. (b).)
- Contract DE-AC02-05CH11231 (Contract 31) under which UC operates the Berkeley Lab for DOE requires the Lab “have implementing procedures that seek to avoid employee and organizational conflicts of interest, or the appearance of conflicts of interest, in the conduct of its technology transfer activities" I.92 (d).
- Each license is reviewed and approved by the following at Berkeley Lab: Licensing Manager, a Patent Attorney or Agent, Technology Transfer and Intellectual Property Management Head, Laboratory Counsel, and either the Laboratory Deputy Director or Laboratory Director.