1. Purpose
This policy establishes guidance to help employees achieve an appropriate balance between the broad dissemination of research results in support of the laboratory’s scientific mission and the protection of intellectual property that can lead to new U.S. industries, new companies, and new jobs in support of the laboratory’s technology transfer mission.
2. Scope
This policy applies to all research and development activities that utilize Fermilab facilities, equipment, or personnel in the performance of the work.
3. Applicability
This policy applies to all Employees and Partners.
4. Effective date
This policy goes into effect on November 1, 2014.
5. Policy
The laboratory will protect intellectual property, through patents and copyrights, that may have potential commercial value, in order to preserve the ability to license these technologies to one or more industrial partners for the enhancement of U.S. competitiveness.
· Employees are required to disclose information on any invention, discovery, creation, or improvement arising from or related to work at Fermilab that is conceived while employed by the laboratory that may have potential commercial value.
· Partners are required to disclose such information in accordance with the terms of the specific partnering agreement that they have signed with the laboratory and/or their funding agency.
· Disclosures must be in writing and shall be submitted to the Office of Partnerships and Technology Transfer.
· Employees will not disseminate or publicly display Proprietary Information belonging to Partners with whom we do business that is subject to a signed non-disclosure agreement or which has been marked clearly as proprietary.
· Employees and Partners will not disseminate or publicly display any information that has been marked Protected CRADA Information.
Decisions to protect intellectual property will be made on a case-by-case basis; however, the laboratory will generally favor protection unless there is a clear, programmatic benefit to waiving protection that outweighs the economic benefit to the U.S.
Disclosures should be made in advance of the publication or presentation of information that describes any such invention, discovery, creation, or improvement, to allow sufficient time to make an informed decision to protect or publicly disseminate the information and not delay the publication or presentation.
6. Definitions
“Cooperative Research and Development Agreement (CRADA)” refers the Partnering Agreement that is used to perform cost-shared, collaborative research with non-federal entities.
“Disclosure” refers to any part of a patent application process where the inventor discloses details about his invention. An adequate disclosure would let a person skilled in the area of the invention reproduce or use the invention. For purposes of this policy, disclosure means providing a written description of an invention, discovery, creation, or improvement to the Office of Partnerships and Technology Transfer.
“Intellectual Property” means the legal rights relating to inventions, patent applications, patents, copyrights, trademarks, mask works, trade secrets, and any other legally protectable information, including computer software.
“Partner” is the term used to refer to all parties who participate in a formal, collaborative relationship with the laboratory, including Sponsors of a Work for Others (WFO) Agreement, Participants in a CRADA, or Users under a User Facility Agreement.
“Partnering Agreement” refers to all forms of legally binding agreements with Partners, excluding procurement instruments and licensing agreements.
“Proprietary Information” means information, including data, which is developed at private expense, marked as Proprietary Information, and embodies trade secretes or commercial or financial information which is privileged or confidential under the Freedom of Information Act (5 U.S.C. 552 (b)(4).
“Protected CRADA Information” means any information produced in the performance of a CRADA and which has been marked as being Protected CRADA Information by the laboratory or the Partner and which would have been Proprietary Information had it been obtained from a non-Federal entity.
“User Facility Agreement” refers to the Partnering Agreement that is used to support research collaborations and externally funded experiments that are performed on-site at Fermilab.
“Work for Others (WFO)” refers to the Partnering Agreement that is used to perform work for non-federal entities on a fully reimbursable basis.
7. Responsibilities
The Chief Operating Officer is responsible for authorizing or delegating authority for making the final decisions on protection of potentially valuable intellectual property.
The Manager of the Office of Partnerships and Technology Transfer is responsible for administering the Partnership Management System for the laboratory, including the administration of the Intellectual Property Management policies and procedures.
8. Authorities
· Atomic Energy Act of 1954, as amended
· Bayh-Dole Act, as amended
· Stevenson-Wydler Technology Innovation Act of 1980, as amended
9. Owner
Responsibility for reviewing this policy and developing the Intellectual Property Management procedures as part of the Partnerships Management System rests with the Manager, Office of Partnerships and Technology Transfer.
10. Review cycle
This policy is to be reviewed every two years after issuance.
The requirements of this policy shall be added to New Employee/User Training courses.
Upon issuance of this policy, a summary of its requirements and a link to the full text shall be published in Fermilab Today.