A few years ago the Legal Department wrote an article to answer two often asked questions regarding intellectual property. Because of the many new employees at the Lab, and the many programs, projects and activities underway, we feel it's time to re-run those questions & answers and to respond to a new query.

Q. What do I have to do to find out if my idea is patentable?

A. The first step requires that an inventor make a prompt disclosure to Jefferson Lab's General Counsel - using the Invention Disclosure Form (you may get the form from the Legal Dept. ext. 7384 or make a copy from the example found in the Lab's Administration Manual, Exhibit 701-2). The disclosure form asks the inventor(s) to discuss the problem which the invention is designed to solve; referring to any similar devices, state the advantages of the invention; describe the invention and its operation and; finally to list the features of the invention that are novel. An accurately completed form usually has several attachments (including a drawing if necessary), is signed and dated by the inventor(s), and includes the signature of two witnesses who have read and understood the concept presented on the form. The process of disclosure at JLab has always been user-friendly in order to encourage disclosure of inventions.

Liquid light guides are one example of technology developed at Jefferson Lab with market potential

After this initial step by the inventor(s), the disclosure form undergoes processing. The Technology Review Committee (TRC) (Fred Dylla, Chair, ext. 7450) makes an initial decision to either pursue a patentability review of the invention, proceed straight to prosecuting a patent application, or to return the invention to the inventor. A patentability review could cost $1,200 to $1,500. If the patentability review is favorable, the Committee must decide whether to pursue a patent as prepared by outside counsel. Since fees for obtaining a patent range from $3,500 to $7,000, the TRC must decide not only which inventions hold the potential for obtaining a patent but also hold potential for successful commercialization. If the invention is returned to the owner, he/she may pursue a patent, use the technology for their own business venture or seek commercial partners for further development, all subject to the Government's rights.

Q. If I disclose my idea by publishing it in a trade magazine, journal, on the Internet or by making some other public disclosure (i.e. conference, seminar), will I lose my right to a future patent?

A. Possibly. Even though you have a 1-year grace period to apply for a U.S. patent after publication, most foreign countries will not allow for this 1-year grace period. Any public disclosure prior to filing a patent application will prevent you from obtaining a patent in such foreign countries. Even though SURA/Jefferson Lab has yet to file for a foreign patent, this aspect of protection may be very valuable with the prospect of licensing to private industry and acquiring international markets. Further, once publication has occurred the idea becomes open to the world, and claiming rights to the invention may become a matter of a race to the U.S. Office of Patent and Trademark. Protecting rights to inventions is an important part of SURA/Jefferson Lab's technology transfer program. However, our desire to protect an idea does not have to conflict with your desire to publish or the Lab's desire to develop cooperative research ventures. With the proper timing of an invention disclosure form, documentation, a patentability review, and obtaining confidentiality agreements, it may be possible to achieve everyone's goals.

Rhonda Scales, Jefferson Lab's patent counsel.

Q. Can employees use intellectual property developed here at the Lab for their own personal business ventures?

A. Maybe. Although an employee's request to use technology developed at the Lab can be a very complicated proposition - filled with conflict of interest issues and questions of impropriety - procedures are in place to facilitate such requests. In order to respond to these concerns, as well as to make sure the general public has a fair opportunity to obtain the technology, the Lab's Technology Review Committee puts such employee requests through a rigorous process to insure that the technology has been properly exploited and that private industry has a fair opportunity to compete for the same technology. Such requests may also require DOE approval. (See the Conflicts of Interest provision under the Patents & Copyright Section of the Admin. Manual.) Staff members who have properly disclosed their outside business activities to the Lab via an Outside Business Activities Request Form (see Admin. Manual Exhibit 208.03-1), may compete for a license or other form of technology transfer mechanism to obtain intellectual property developed on site - just as any other company would. Regardless of whether an employee-inventor is licensed under this process, he/she is eligible to share in any royalties resulting from the licensing process.

Q. How does the Lab protect drawings, designs and computer software?

A. These forms of intellectual property are usually protected by a copyright although they may also be protected under a patent or trademark if necessary. Technically, a copyright exists when a work is created. Registration with the U.S. Patent and Trademark Office is now optional. However, registration is usually highly recommended if the work is the subject of a license or has commercial viability. Additionally, since employees of the Lab work for a government owned and contractor operated facility, SURA must seek DOE's approval in order to perfect copyrights in works created by its employees.

Most of the drawings, diagrams and software developed at Jefferson Lab are not proprietary and do not have commercial value. Those works belong in the public domain and are accessible by the public for non-commercial purposes. (A release statement incorporating the "non-commercial" use of such works should accompany their publication and transfer.)

Intellectual Property Seminar

Mark your calendar and plan to attend "Protecting Our Intellectual Property" - the seminar will be held September 9 at 2 p.m. in the ARC Auditorium, and feature discussions on these and other IP issues.

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