The next step is for Lab researchers to report the invention or software to the Technology Transfer and Intellectual Property Management Department. The invention report is not a patent application and in and of itself secures no intellectual property rights. It is used by the Lab to make a decision as to whether to proceed with a patent application.
Why Report: The Lab’s contract with DOE requires that the Lab report all Lab inventions. If you have created tangible research product that has commercial use, disclose it on a Record of Invention (ROI) form (Word doc), even if you think it may not be patentable. Any public disclosure of your invention prior to the date of the Lab filing a patent application will forfeit the opportunity to file a patent in most foreign countries; one year after a publication, all patent rights are barred. Furthermore, the Software Disclosure and Abstract (Word doc) provides information necessary for the Lab to comply with DOE requirements for any external distribution of software, including under an open source license.
How to Report: The inventor or software developer submits a Record of Invention (ROI) form or a Software Disclosure and Abstract form (Word doc), which describes the technology and lists those who contributed to the invention or software. If you have any questions, call the Patent Group at x7058.
When to Report Software: A Software Disclosure and Abstract form must be submitted to the Tech Transfer Department before any external distribution of the software program. Particularly if the LBNL software developers have incorporated any third-party software into their code, it's preferable to submit the Software Disclosure several weeks prior to the projected date of first distribution.
When to Report an Invention: A ROI form must be submitted to the Tech Transfer Department before an invention is publicly presented (via the internet, a talk, poster, or any other means of communication). A good rule of thumb is to report once a first draft of a publication or public presentation has been completed, and ideally at least two months before any expected web or hardcopy publication, or presentation. The ROI form should be submitted:
- Before a written description of the invention has been submitted to a publisher or conference
- Before a written description of the invention appears in an LBNL report, press release, or a written report which will be available to people outside LBNL and DOE
- Before a public demonstration of the invention
- Before selling or offering to sell the invention
- Before regular use of the invention at LBNL or elsewhere except for testing and development
- Before a public disclosure, such as in a talk or in a poster or slide presentation, when the audience is not restricted to people from LBNL, UC, DOE, or DOE contractors.
Public Disclosure: A public disclosure, which may start the one year clock ticking for patent rights in the U.S. and precludes patent rights elsewhere, is not confined to publications. Any written or oral disclosure, even to a single person, may constitute a public disclosure. Disclosures to Lab or UC employees do not count as public disclosures. If a disclosure is to be made to others, contact Tech Transfer so that a Non-Disclosure Agreement may be formed to ensure that such a disclosure is not a public disclosure.
Non-Disclosure Agreements: Often companies that are interested in licensing a technology will want to talk to the inventors to gain additional information. An inventor can protect an invention by discussing it with third parties outside the Lab only after a Non-Disclosure Agreement (NDA) has been put in place. If you want to discuss an invention with someone outside the Lab, contact Julie Hart at 495-2908 to arrange an NDA agreement. Click here to see a sample NDA form.
Publications: The Technology Transfer Department is committed to protecting inventions without interfering with or unnecessarily delaying academic publication. Publication and pursuing a patent are fully compatible if the inventor submits a Record of Invention with adequate time for Tech Transfer Department's review and action prior to the publication. Please see a discussion of Patent Pre-Publication Review.