Invention Procedures - From Idea to Patent to Royalties
||You get an idea for an invention.
Write it down!
- Fill out and electronically submit the JSA/Jefferson Lab Invention Disclosure Form utilizing the IPFolio Database.
- Print out a copy of the electronically submitted form and get two people to read and sign as having read and understood your invention as disclosed on the form.
- Submit the completed paper copy of the form, with signatures, to the Technology Review Committee (via the Legal Assistant in CEBAF Center Rm. B217). Any member of that Committee will be happy to help you if you have questions about the form or process.
- Be patient and work closely with the Committee. Be Careful - Do not talk to companies about making your product before involving the Committee. YOU COULD LOSE BOTH YOUR AND JSA'S RIGHTS TO THE INVENTION!
||Upon Receipt of a new Invention Disclosure, the IP Database Administrator will:
- Notify the Technology Review Committee, within 1 week after the inventor discloses it in writing, that an Invention Disclosure has been submitted
- Prepare a copy of all new Invention Disclosures received within the last 30 days for submission to DOE Patent Counsel.
Jefferson Lab Legal Counsel will transmit copies of all new Invention Disclosures to DOE Patent Counsel within 2 months of disclosure with a request for Serial Numbers
||The Technical Subcommittee of the TRC will meet monthly to evaluate every disclosure. (See attached flowchart with criteria for priority ranking.) This subcommittee can recommend to the TRC..
- Patent prosecution; or
- A Patentability Review by JSA's outside patent counsel; or
- A market analysis; or
- Request more information from the inventor(s); or
- 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.
In addition to prioritizing inventions based on marketability, the Technical Subcommittee also evaluates each technology's relevance to JSA's four Business Lines - Accelerators/Light Sources, Medical Imaging, Detectors/Sensors and High Speed Computing. Technologies outside the business lines are considered for patent prosecution on a case by case basis
- After a decision by the TRC to prosecute a patent or to return rights to the inventor, Legal Counsel will notify DOE within two years of disclosure whether or not JSA will retain title to any such inventions. In the case of publication, JSA will notify DOE of its election of title no more than 60 days prior to the end of the statutory period.
- JSA will file its initial patent application on an invention to which it elects to retain title within one year after election of title, or if earlier, prior to the end of any 1-year statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use.
- JSA will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application or six months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications where such filings have been prohibited by a Secrecy Order
- Promptly convey a confirmatory license to the Government establishing world-wide rights after filing a patent application.
- Maintenance fees will be paid on all licensed patents for the life of patent. In all other cases, the decision to continue maintenance of a patent, move forward on appeal, or proceed with any other action will be based on input from the inventor(s), advice of patent counsel and consensus of the TRC.
- Criteria for continued maintenance or defense of an invention include, consideration of budgetary constraints, advancements in the field, commercial viability, and whether the technology represents background IP for future developments.
- Legal Counsel will notify the Inventor(s), Business Partners and DOE Patent Counsel of any decision not to continue prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceeding on a patent, in any country, not less than thirty days before the expiration of the response period required by the relevant patent office.
- JSA will include within the specifications of any United States patent applications and any patent issuing thereon covering a subject invention the following statement, "This invention was made with government support under Contract No. DE-AC05-06OR23177 awarded by the Department of Energy. The government has certain rights in the invention."
- It may take two or more years before the U.S. Patent and Trademark Office rejects or accepts a patent application. If the application is approved, a "Notice of Allowance" is issued; which means a patent will be issued. If a patent application is rejected, JSA through the TRC may accept or appeal the ruling.
- A $500 cash award is granted by JSA to the inventor(s) for each patent issued by the Patent Office.
- All Jefferson Lab inventions are owned by JSA and are available for licensing by private companies. A license gives a company the right to manufacture and sell the product in exchange for a portion of the profits (royalties). When a patent is licensed, JSA and the inventor(s) share the resulting royalties on a 50-50 basis after Administrative Costs have been recovered.
For more information about Intellectual Property and Inventions, please see the Jefferson Lab Employee Handbook, the Jefferson Lab
Administrative Manual, or any member of the Technology Review Committee.