LBNL-ESD Patent Policy: Protect Your Inventions within Your Publications!
Below is a step-by-step explanation of how inventions should now be handled as they relate to publications and the public domain. The key point is to take action to protect any patentable material you’ve created by filing an Invention Disclosure Form with LBNL Patent Group as soon as you finish, or even as you are writing, any document that discusses this material. Note that the possibility exists for a long time break (possibly a year or more) between Step 3 and Step 4. Unless the scientist takes Step 2 below (filing the Invention Disclosure Form with the LBNL Patent Group), the potential invention is left unprotected during that time. The normal workflow would be:
Scientist/author/P.I. invents something, or is informed by colleagues that his/her work is potentially patentable.
Scientist writes the paper (ensuring all Divisional requirements are met) and sends it out for peer review at a journal.
Paper is accepted for publication by a journal.
Paper is submitted to ESD Reports Coordinator, to process an LBNL number application. Once the number application is submitted into the LBNL Reports Database, the attached paper is automatically routed to the Patent Group for patent review. If the paper contains patentable material, prior submission of the Invention Disclosure Form (Step 2 above) facilitates document processing. It is expected that the Patent Group review will be completed within two weeks of your submission.
Patent Group/Tech Transfer processes the invention disclosure, reviews the paper for the commercial potential of the invention, and (if the invention is selected as having such potential) works with the scientist to file a U.S. Patent application, prior to communicating outside the Lab about the discovery or invention.
Scientist speaks or writes publicly about the work/discovery/invention.
If the scientist does not file an Invention Disclosure Form, because he/she does not realize that the work is something patentable, then the scientist would be relying upon the automatic patent review of the paper (see Step 5 above and also see Patent Pre-Publication Review at LBNL). After this review, the scientist would be contacted by Patent Group to possibly further protect the work, prior to release or disclosure outside the Lab. If the scientist has already communicated their work/discovery/patentable idea, outside the Lab, without going through the Patent Group first, then in all likelihood, the Patent Group would be unable to protect the work internationally, to the satisfaction of potential investors/funders of the idea or invention. In the U.S., rights could be protected for up to a year after initial disclosure publicly. Investors often want both U.S. and international rights, to justify their investment.