Administrative Manual - 700 Intellectual Property

701 Patents and Copyrights

POLICY STATEMENTS
1. JSA adopted the JSA policy on Intellectual Property, including Patents and Copyrights, during transition of the Jefferson Lab contract effective June 1, 2006. This policy is maintained by Legal Counsel and is available for your review. Appendix 1 to the JSA Policy is the specific Policy relating to the JSA/DOE contract for JLab, which is the governing policy for JLab related inventions and other intellectual property.
2. The procedures in this section are intended to provide general guidance regarding your intellectual property rights and obligations. Consult the Lab Legal Counsel for any additional information. [Note that the designation "Jefferson Lab" in the following text is used as a reference to the role of JSA as Contractor for the Thomas Jefferson National Accelerator Facility ("Facility")].
PROCEDURES
1. Disclosure
  The inventor should promptly disclose all applicable inventions to JSA/Jefferson Lab on-line using the INTEUM database. Disclosure requirements required by the DOE/JSA Contract are embodied in the Employee Agreement which each employee is required by the terms of the Contract to sign (Exhibit 701-2). Reportable inventions are defined in the Employee Agreement.
2. Evaluation
  After submittal of a completed Invention Disclosure Form, the Technology Review Committee on the recommendation of its Technical Subcommittee will proceed with:
  1. Patent prosecution; or
  2. A Patentability Review by JSA's outside patent counsel; or
  3. Request more information from the inventor(s); or
  4. Formally return the disclosure to the inventor(s), at which point JSA will elect not to retain title in writing to DOE; relinquishing all rights to the invention. The inventor(s) are then free to pursue the invention.
3. Responsibilities
  U. S. Law allows JSA to become the owner of certain intellectual property rights created by its employees. Through the Department of Energy (DOE), the U. S. Government also has extensive rights under these inventions. In certain cases, however, JSA may return the invention to the inventor thus waiving in whole or in part its right to the invention.
  
  While the DOE/JSA contract provides funding for the patent applications, the contract also imposes obligations on the inventor to cooperate with JSA/Jefferson Lab and the Department of Energy in the furtherance of the patent application and in any subsequent licensing activities of the organization. In exchange for the efforts of the inventor, a royalty sharing program required by the DOE/JSA contract is prescribed which allows a sharing in all net royalties received by JSA/Jefferson Lab. The rights and duties of JSA, the DOE, and the individual employee are all described in further detail in the JSA/JLab Policy on Intellectual Property and in the Employee Agreement attached to this procedure.
4. Licensing
  In order to meet its obligations to transfer technology as required by the laws of the United States, JSA/Jefferson Lab has developed a Technology Transfer Program which includes the licensing of inventions and copyrights.
CONFLICTS OF INTEREST
1. In accordance with the DOE/JSA Contract, JSA has established procedures (including this procedure) to avoid actual or apparent conflicts of interest in the areas of intellectual property administration and technology transfer, which include requirements to:
  1. Inform employee of and require conformance with standards of conduct and integrity, in connection with the Cooperative Research and Development Agreement (CRADA) activity in accordance with the provisions of the Technology Transfer Clause;
  2. Review and approve employee activities to avoid conflicts of interest arising from commercial utilization activities to Contractor-developed Intellectual Property;
  3. Conduct work performed using royalties to avoid interference with or adverse effects on ongoing DOE projects and programs;
  4. Conduct activities relating to commercial utilization of Contractor-developed Intellectual Property to avoid interference with or adverse effects on user facility or Work For Others (WFO) activities of the Contractor;
  5. Conduct DOE funded projects and programs to avoid the appearance of conflicts of interest or actual conflicts of interest with non-Government funded work;
  6. Notify the Contracting Officer with respect to any new work to be performed or proposed to be performed under the Contract for the DOE or other Federal agencies where the new work or proposal involves Intellectual Property in which the Contractor has obtained or intends to request or elect title;
  7. Except as provided elsewhere in this Contract, obtain the approval of the Contracting Officer for any licensing of or assignment of title to Intellectual Property rights by the Contractor to any business or corporate affiliate of the Contractor;
  8. Obtain the approval of the Contracting Officer prior to any assignment, exclusive licensing, or option for exclusive licensing, of Intellectual Property to any current or former Laboratory employee or consultant within the previous two years to the company in which the individual is a principal;
  9. Notify non-Federal sponsors of WFO activities, or non-Federal users of user facilities, of any relevant Intellectual Property interest of the Contractor prior to execution of WFOs or user Agreements.
  10. Notify DOE prior to evaluating a proposal submitted by a third party or DOE, when the subject matter of the proposal involves an elected or waived subject invention or one in which the Contractor intends to elect or retain title.
2. In addition to the preceding paragraphs a. through j. above, detailed procedures for CRADAs will require the additional check list and certifications:
  1. Except as provided in paragraph c. below, the Contractor shall assure that no employee of the Contractor shall have a substantial role (including an advisory role) in the preparation, negotiation, or approval of a CRADA, if, to such employee's knowledge:
    1. Such employee, or the spouse, child, parent, sibling, or partner of such employees or an organization (other than the Contractor) in which such employee serves as an officer, director, trustee, partner, or employee:
      1. holds financial interest in any entity, other than the Contractor, that has a substantial interest in the preparation, negotiation, or approval of the CRADA; or
      2. receives a gift or gratuity from an entity, other than the Contractor, that has a substantial interest in the preparation, negotiation, or approval of the CRADA; or
    2. A financial interest in any entity, other than the Contractor, that has a substantial interest in the preparation, negotiations, or approval of the CRADA, is held by any person or organization with whom such employee is negotiating or has any arrangement concerning prospective employment.
  2. The Contractor shall require that each employee of the Contractor who has a substantial role (including an advisory role) in the preparation, negotiation, or approval of a CRADA certify through the Contractor to the Contracting Officer that the circumstances described in paragraph a. above do not apply to that employee.
  3. The requirements of paragraphs a. and b. above shall not apply in a case where an employee, described therein, advises through the Contractor, the Contracting Officer in advance of his or her participation in the preparation, negotiation or approval of a CRADA of the nature of and extent of any financial interest described in paragraph a., and the Contracting Officer determines that such financial interest is not so substantial as to be considered likely to affect the integrity of the Contractor employee's participation in the process of preparing, negotiating, or approving the CRADA.
Additional guidance relating to conflicts of interest may be found in Section 200, Human Resources and Services, of this Manual.

EXHIBIT 701-1

APPENDIX 1 TO THE JSA POLICY ON INTELLECTUAL PROPERTY

Relating to the JSA/DOE Contract for the

Continuous Electron Beam Accelerator Facility

GENERAL CONSIDERATIONS
1. The provisions of the JSA Policy as set forth in the principal document to which this attachment is appended shall apply except where specifically modified herein. The provisions of this Appendix shall supersede the Policy where the two documents are inconsistent.
2. A Management and Operating Contract, No. DE-AC06OR23177 (the M&O Contract) has been entered into between JSA and the U. S. Department of Energy (DOE), for the design, construction, management and operation of the Thomas Jefferson National Accelerator Facility (Jefferson Lab). The provisions of the contract reflect Public Law 96-517, as amended by Public Law 98-620, and grant JSA the option to take title to certain inventions made in the course of or under the M&O Contract and to the resultant patent rights covering said inventions. (The designation "Jefferson Lab" is used as a reference to the role of JSA as Contractor at the Facility subject to the provisions of this Appendix 1.)
PURPOSE
It is the purpose of this Appendix 1 to define the functions, responsibilities and rights of JSA/Jefferson Lab and its employees under the terms of the M&O Contract relating to intellectual property and the allocation of rights thereto.
EMPLOYEE AND CONSULTANT INTELLECTUAL PROPERTY
Every Jefferson Lab employee is expected to execute an agreement relating to intellectual property rights which reflects the provisions of the M&O Contract as well as the JSA Policy. The provisions of this Appendix 1 and the Policy on Intellectual Property are also made applicable by contract to consultants or subcontractors to the extent permitted by law.
OWNERSHIP AND RELEASE OF INTELLECTUAL PROPERTY RIGHTS
1. Jefferson Lab will initially own certain intellectual property rights created by its employees and, to the extent provided by agreements, its consultants.
2. Under the provisions of P. L. 96-517 as amended by P. L. 98-620, Jefferson Lab has the right to elect to retain title to all inventions conceived or first actually reduced to practice by its employees at the Facility in the conduct of job-related research. This right is reflected in the Patent Rights Clause implementing these statutes included in the M&O Contract.
3. If Jefferson Lab does not elect to retain title to an invention made in the conduct of applicable research, the M&O Contract provides that the U. S. Government may take title.
4. Jefferson Lab, in appropriate circumstances, may release ownership of its intellectual property rights in whole or in part to its employees and consultants subject to the terms and conditions of the M&O contract. An example of an appropriate circumstance is when a patent or copyright is not needed or will not be commercialized by Jefferson Lab or DOE, and Jefferson Lab has the right to make such a release.
5. If Jefferson Lab does not take or wish to retain title and DOE does not choose to obtain title or other protection under the M&O Contract, Jefferson Lab will notify the inventor and the inventor may, at his or her discretion, petition DOE for a waiver of Government rights in favor of the individual inventor. In order for a Government waiver of rights to be effective for a Jefferson Lab employee, Jefferson Lab must also consent to this waiver. This provision applies separately to domestic and foreign patent rights.
6. Jefferson Lab will treat copyrighted work made by Jefferson Lab employees in a manner consistent with its obligations under the M&O Contract.
PATENT AND COPYRIGHT PROTECTION AND LICENSING OF JSA OWNED SUBJECT INVENTIONS
1. Jefferson Lab will provide resources, at its discretion, to attempt to obtain patent coverage, to register copyrights and to attempt to license or sell patent rights and copyrights, consistent with the terms and conditions of the M&O Contract with DOE.
2. Jefferson Lab shall have the sole authority for developing written agreements, arranging for patent applications and licensing, negotiating with patent management organizations, and all business administration related thereto.
3. It is recognized that the furtherance of commercialization of inventions and technological developments covered by this Policy may be accomplished by Jefferson Lab's entering into patent licensing and other agreements. Such agreements may take many forms and Jefferson Lab may, with due consideration to the capabilities of the prospective licensee, license patent rights and/or copyrights on any basis Jefferson Lab deems appropriate, including the direct licensing of employees on either an exclusive or non-exclusive basis, with the
  understanding that rights to a subject invention may not be assigned without DOE approval, except where such assignment is made to an organization having as a primary function the management of inventions.
INCOME DERIVED FROM PATENT RIGHTS AND COPYRIGHTS
1. Royalties and similar income from patent rights and copyrights covered by this Policy will be payable to Jefferson Lab, which will make distribution of such royalties and similar income in accordance with the provisions of this Policy.
2. "Net Royalty Income" shall mean gross royalties and similar income received by Jefferson Lab, less administrative, marketing and the legal costs associated with patenting, registering copyrights, licensing and negotiating agreements.
3. Jefferson Lab sharing of royalties collected on an invention with the inventor, will include Federal employee co-inventors of patent rights (when the agency deems it appropriate) when the subject is assigned in accordance with 35 USC 202(e) and 37 CFR 401.10.
  The Net Royalty income derived from patent rights on inventions and copyrights to which this Policy is applicable shall be shared by the inventor and/or creator and Jefferson Lab on any inventions subject to this Appendix 1 on a fifty-fifty (50/50) share and share alike basis.
4. Absent an agreement between and among themselves on the respective proportions of royalties to be received by each of them, joint or multiple inventors and/or creators of the same package of rights licensed or transferred by an agreement shall receive equal portions of the percentage of Net Royalty Income set aside as the inventors' and/or creators' share, unless the Director determines that some other distribution is more equitable and so advises the inventors in writing.
5. After payment of patenting costs, licensing costs, payments to inventors and other expenses incidental to the administration of Subject Inventions, the balance of any royalties or income earned and retained by the Contractor during any fiscal year on Subject Inventions under this or any successor contract containing the same requirement, up to any amount equal to five percent of the budget of the Facility for that fiscal year, shall be used by the contractor for scientific research, development, and education consistent with the research and development mission and objectives of the Facility, including activities that increase the licensing potential of other inventions of the Facility. Such royalties or income shall be used at the Facility to the extent delineated in the Technology Transfer Article of the M&O Contract.
6. Costs for conducting technology transfer shall be allowable to the extent provided in the Technology Transfer Article.
  
  Royalties received by the Contractor which are required to be used at the Facility shall be used for scientific research, development and educational purposes in accordance with the Technology Transfer Article.
7. CEBAF reserves the right to modify this Policy consistent with its organizational policies and its obligations under the M&O Contract.
CONDUCT OF EMPLOYEES
Pursuant to the provisions of the M&O Contract, Jefferson Lab has established written standards and procedures as are necessary to implement requirements related to conflicts of interest. These standards and procedures are embodied in the Jefferson Lab Administrative Manual, primarily in Section 200, Human Resources and Services, Section 700, Intellectual Property, and in the corresponding documents, certifications and guidelines set forth in those and other sections of the Administrative Manual.
WORK FOR OTHERS
Rights in intellectual property arising from non-DOE funded work, or work funded only in part by DOE funds, shall be governed by appropriate provisions incorporated in such agreements and shall take precedence over any disposition of rights contained in the M&O Contract. Rights arising from other than funding agreements with third parties such as arrangements under which a sponsor reimburses the Government or Jefferson Lab for work performed for the sponsor, shall require DOE approval.
IMPLEMENTATION
The effective date of this policy is June 1, 2006.
EXHIBIT 701-2

EMPLOYEE AGREEMENT ON INTELLECTUAL POLICY

SUMMARY
1. Notify Jefferson Lab and Assign Rights. This paragraph describes the job-related ideas and inventions which must be disclosed to Jefferson Lab.
2. Execute Documents and Assist. This paragraph explains the various situations where documents must be completed to fulfill the obligations set forth in Paragraph 1.
3. Waiver and Royalty Allocation. While the employee waives any compensation under the Atomic Energy Act, the employee has a right to a share of royalties received by Jefferson Lab. (At Jefferson Lab, it is a 50/50 share).
4. Publication. Jefferson Lab has a policy that requires submittal of papers to management for review prior to publication.
5. Definitions. Proprietary information, inventions, copyright works, mask works and patents are defined.
6. Work Made for Hire. This explains that any work done at Jefferson Lab is legally classified as "Work Made for Hire."
7. Proprietary Information. This is a standard statement explaining the employee's duty of proper handling of proprietary information.
8. Proprietary Information of Prior Employer. Proprietary information from previous employment may not be disclosed.
9. Other Contracts. This clarifies that there are no other contracts in existence which could impact intellectual properties created under this contract.
10. Severability. This is a legal requirement stating that if one part of this agreement can be set aside others can still be enforced.
11. Prior Rights Excluded. The employee can clearly state what intellectual property should be excluded from this agreement.
12. Modification of Agreement. Any change must be in writing and signed by both parties.
13. Supersede Prior Agreements and Binding on Others. This is the latest agreement on the subject.
14. Right of Assignment. If Jefferson Lab holds the property, only Jefferson Lab can assign it to another.
15. Law Applied. The law of Virginia is applicable.

Exhibit 701-2 (Continued)

JEFFERSON SCIENCE ASSOCIATES, LLC. (JSA) CONTINUOUS ELECTRON BEAM ACCELERATOR FACILITY

AGREEMENT ON INTELLECTUAL PROPERTY INCLUDING INVENTIONS, DISCOVERIES, TECHNICAL DATA COPYRIGHTS AND PROPRIETARY INFORMATION

In consideration of my employment or consulting agreement with Jefferson Science Associates, JSA, for work in connection with the Thomas Jefferson National Accelerator Facility, I hereby agree as follows: (Note: The designation Jefferson Lab is used in the following text as a reference to the role of JSA as Contractor at Jefferson Lab subject to the provisions of Appendix 1 to the JSA Intellectual Property Policy.)

Notify CEBAF and Assign Rights
Jefferson Lab has the legal right to certain Intellectual Property which includes Inventions, Proprietary Information, Copyright Works and Mask Works as defined in Section 5. These items become the property of Jefferson Lab upon conception and whether or not Patent, Copyright or Mask Work applications are filed on them.

Because of Jefferson Lab's right to the Intellectual Property as described above, I will communicate to Jefferson Lab, in a format determined by Jefferson Lab, promptly and fully, all Inventions, Proprietary Information, Copyright Works or Mask Works which solely or jointly have been made or conceived by me during the period of my employment or consultancy under the following conditions.
1. which have been developed in whole or in part by the utilization of funds, resources or facilities belonging to Jefferson Lab or the Department of Energy (DOE), or
2. which result from or are suggested by any work which I have done or may do for or on behalf of Jefferson Lab, or
3. which are developed, tested, improved or investigated either in part or entirely on time for which I was paid by Jefferson Lab or using any resources of Jefferson Lab.
I agree to assign the entire right, title and interest thereto to Jefferson Lab, who at its sole discretion, may release the rights, in whole or in part, back to employees or consultants in appropriate cases such as when Jefferson Lab and DOE do not wish to pursue the matter and Jefferson Lab is free under its contractual commitments to issue such a release.
Execute Documents and Assist
Subject to the conditions set forth in Paragraph 1, I agree:
1. To execute at any time during or after my employment or consultancy an assignment for each such Invention, Proprietary Information, Copyright Work or Mask Work as Jefferson Lab may request and on such forms as Jefferson Lab may provide.
2. To promptly and fully assist Jefferson Lab during and subsequent to my employment in every lawful way without reimbursement (other than my normal compensation or fees as an employee or consultant of Jefferson Lab and other necessary expenses or other than a reasonable payment for time involved in the event employment or the consultancy with Jefferson Lab has terminated), but at the expense of Jefferson Lab, to obtain and maintain for the benefit of Jefferson Lab Patents, Copyrights, Mask Work protection or other proprietary rights in any and all countries irrespective of whether I personally believe such Inventions to be patentable or Copyright Works or Mask Works to be protectable.
3. To promptly sign any and all lawful papers, take all lawful oaths and do all lawful acts, including giving testimony, requested by Jefferson Lab, without cost to me and at the expense of Jefferson Lab, in connection with any Patent, Copyright and Mask Work applications and/or any divisions, continuations, continuations-in-part, extensions, renewals, reexaminations or reissues thereof. Such lawful papers include, but are not limited to, any and all powers, assignments and other papers deemed by Jefferson Lab to be necessary or advisable in connection with the filing or prosecution of any such Patents, Copyrights or Mask Works or in connection with the transfer of any rights to the Invention, Copyright or Mask Work.
4. To cooperate with the U.S. Department of Energy (DOE) or other Government Agency or Sponsor in its patent application process or efforts to obtain protection for Copyright Works or Mask Works at no cost to me whether or not Jefferson Lab pursues Patent Rights, Copyright or Mask Work rights based upon my work.
Waiver and Royalty Allocations
I agree to waive any right to compensation under the Atomic Energy Acts of 1946 and 1954; I understand that as an employee I may be compensated for any patents or copyrights obtained by Jefferson Lab on my work and licensed by it to others. It is my understanding the
Jefferson Lab has written policies which may be changed from time to time that set forth the allocation of royalties after Jefferson Lab's recovery of expenses. Copies of Jefferson Lab's current policies and policies of JSA are available to me upon request.
Publication
I agree to submit a copy of any material I wish to publish resulting from my employment or consultancy with Jefferson Lab for review and comment to my supervisor or other designated Jefferson Lab person before sending it to the publisher. If Jefferson Lab requests that such publication should not be made or should be delayed because publication may damage patent rights, violate contractual commitments, reveal proprietary data of Jefferson Lab or others, I will abide by Jefferson Lab's request.
Definitions
For the purposes of this Agreement, the following words shall have the following meanings:
1. “Proprietary Information” means technical data which embody trade secrets developed at private or public expense, such as design procedures or techniques, chemical composition of materials, or manufacturing methods, process, or treatments, including minor modifications thereof;
2. “Invention” means any new or useful art, discovery, contribution, finding, or improvement whether or not patentable, and all related knowhow.
3. “Copyright Works” are materials for which copyright protection may be obtained, including but not limited to: literary works, computer programs, artistic works (including designs, graphs, drawings, blueprints and other works), recordings, photographs, slides, motion pictures, and audio-visual works;
4. “Mask Works” are a series of related images, however, fixed or encoded, having or representing a predetermined, three dimensional pattern of metallic, insulating or semiconductor material present or removed from the layers of a semiconductor chip product; and in which series the relation on the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product and is fixed in a semiconductor ship product; and
5. “Patents” are protection offered under the laws of a given country and include regular patents, design patents, plant patents, inventor's certificates, protection afforded by the Plant Variety Act and similar forms of protection.
"Work Made for Hire
Original works of authorship fixed in any tangible form, prepared by me (alone or jointly with others) within the scope of my employment or consultancy with Jefferson Lab, shall be deemed “work made for hire” under the copyright laws and are owned by Jefferson Lab. I understand that any assignment or release of such works can only be made by Jefferson Lab. I will do everything reasonable necessary to enable Jefferson Lab or its nominee to protect its rights in such words.
Subject to the provisions of Paragraph I above, I agree:
Subject to the provisions of Paragraph 1 above, I agree:
1. Not to disclose any Proprietary Information of Jefferson Lab or obtained from others, either during or after my employment with Jefferson Lab, except upon written consent of Jefferson Lab. It is understood that such Proprietary Information of Jefferson Lab includes matters that I conceive or develop as well as matters I learn from other employees of Jefferson Lab. I will not, except as Jefferson Lab may otherwise consent or direct in writing, reveal or disclose, sell, use, lecture upon, or publish any Proprietary Information of Jefferson Lab, or authorize anyone else to do these things at any time either during or subsequent to my employment with Jefferson Lab. This clause shall continue in full force an effect after termination of my employment. My obligations under this clause of this Agreement with respect to any specific Proprietary Information shall cease when that specific portion of the Proprietary Information becomes general public knowledge.
2. To treat proprietary data or other technical, business, or financial data in accordance with any restrictive legend contained on the document.
3. Not to establish any claim to copyright in any data first produced during and resulting from my employment with Jefferson Lab without Jefferson Lab's prior authorization.
Proprietary Information of Prior Employer
I will not disclose or use during the period of my employment with JSA any Proprietary Information which I may have acquired because of employment with an employer other than Jefferson Lab, and which would be inconsistent with this agreement, whether such information is in my memory or embodied in a writing or other physical form.
Other Contracts
I represent and warrant that I am not a party of any existing contract relating to the granting or assignment to others of any interest in Inventions, Proprietary Information, Copyright Works or Mask Works subject to the provisions of Section 1, above, hereafter made by me except insofar as copies of such contracts, if any, are attached to this Agreement.
Severability
If any provision of this Agreement is declared void or unenforceable or against public policy, such provision shall be deemed severable from this Agreement and the balance of this Agreement shall remain in full force and effect.
Prior Rights Excluded
At the end of this Agreement I have set forth what I represent and warrant to be a complete list of all inventions, if any, patented or unpatented, Copyright Works or Mask Works, including a brief description thereof (without revealing any Proprietary Information of any other party) which I made or conceived prior to my employment with Jefferson Lab and for which I claim ownership or which are the property of a former employer or which do not fall within the scope of Paragraph 1 during the term of my employment with Jefferson Lab and are therefore excluded from the scope of this Agreement. If there are not prior rights excluded, I have checked a box at the end of this Agreement to that effect. Jefferson Lab shall hold any such disclosures in strict confidence unless disclosure is required by a court of law.
Modification of Agreement
This agreement on behalf of or in respect to Jefferson Lab may not be changed or modified or released or discharged or abandoned or otherwise terminated , in whole or in part, except by an instrument in writing signed by an officer or other authorized official of Jefferson Lab.
Supersede Prior Agreements and Binding on Others
This Agreement replaces and supersedes any existing Agreement entered into between me and Jefferson Lab relating generally to the same subject matter, if any, and shall be binding upon my heirs, executors, administrators or other legal representatives or assigns.
Right of Assignment
This Agreement may be assigned by Jefferson Lab to a successor to all or substantially all of the business or assets of CEBAF or of any division or part of Jefferson Lab with which I shall be employed. This Agreement will continue in effect upon my transfer from employment by Jefferson Lab to future re-employment by Jefferson Lab or by any subsidiary or affiliate or division thereof, on condition that a like agreement is in effect between such future employer and employees thereof.
Law Applied
This Agreement shall be construed and interpreted in accordance with the common and statutory law of the commonwealth of Virginia.

No prior Rights are excluded under Article 11 above.

Prior Rights claimed below:

Date:

Signed:

Witness:

Address of Employee:

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Administrative Manual - 700 Intellectual Property

701 Patents and Copyrights