- Appropriate uses of Berkeley Lab's outgoing transfers are to enable the recipient to evaluate the material's potential commercial utility or the recipient's interest in obtaining a commercial license from Berkeley Lab; to replicate, reproduce, evaluate, or confirm Berkeley Lab's research effort; or do research furthering Berkeley Lab's programmatic goals.
- Laboratory staff must observe the following procedures when Berkeley Lab transfers tangible research material to third parties. These procedures are established to enable Berkeley Lab to comply with its obligation under the UC-DOE Prime Contract to maintain the patentability of inventions, foster successful technology transfer, and avoid liability for others' use or misuse of Laboratory material, and maintain appropriate control over the material (e.g., the use of the materials may be limited to specific projects and preclude the further transfer of the materials to non-approved recipients).
- Contact IPO when you wish to transfer Berkeley Lab tangible research material; IPO will prepare an MTA.
- Transfer the tangible research material only after the MTA is signed by both IPO and the recipient.
- For any tangible research material to be transferred, appropriately label and include instructions for handling as necessary for safe use.
- Ship all tangible research materials through Berkeley Lab's Shipping and Receiving Department to ensure compliance with Export Control and other applicable laws.
- Generally, incoming transfers of tangible research material are generally not commercially available or have limited availability and are necessary or useful to further Berkeley Lab's programmatic goals. (For purchases of tangible research materials, go through the Procurement and Property Management Department.)
- Laboratory staff must observe the following procedures if the third-party supplier of tangible research material requires the use of an MTA:
- Contact IPO to review the MTA and negotiate any required modifications to the contract.
- Comply with the terms of the MTA. In particular:
- Confirm whether you can transfer the tangible research material to anyone else (virtually all MTAs prohibit transfer outside of Berkeley Lab, and many restrict transfer to a particular research group)
- Comply with any restrictions on use, e.g., typically for noncommercial use
- Comply with any pre-publication review or reporting requirements
E. Roles and Responsibilities
Role
Responsibility
IPO Licensing Staff
- Negotiates and approves MTA and any amendments
- Keeps MTA records
Berkeley Lab Researchers, Including Affiliates
- Submit or forward MTA request to IPO
- Appropriately label outgoing materials and secure third-party materials
- Ship through the Shipping and Receiving Department
- Comply with third-party MTA obligations, and request that IPO negotiate any needed changes
F. Definitions/Acronyms
Term
Definition
Tangible Research Material
Items produced in the course of research that are not generally commercially available. Tangible research material includes such items as biological materials, chemical compounds, computer software, integrated circuit chips, prototype devices, and equipment that is not yet available on the market.
Tangible research material is separate and distinct from intangible (or intellectual) property such as inventions, patents, copyright, and trademarks.
Non-Laboratory employees engaged in on-site Laboratory activities. Affiliates are subject to training in safety and other subjects. They are also issued a Berkeley Lab identification badge. Affiliates may receive system accounts, research access to facilities, and a per diem allowance for housing and living expenses.
Examples: Facility users, scientific collaborators, studentsIntellectual Property (IP)
Intellectual property (IP) refers to creations of the mind: inventions, creative, literary and artistic works, and symbols, names, images, and designs used in commerce. The means to protect IP include patents, trademarks, copyright and trade secrets. Patents protect inventions. Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. Copyrights protect works of authorship, such as writings, software, music, and works of art that have been tangibly expressed. Trade secrets are information that companies keep secret to give them an advantage over their competitors. While Berkeley Lab has discretion to secure and license patents, trademarks and copyrights, it is prohibited by DOE policy from licensing trade secrets.
Material Transfer Agreement (MTA)
A contract that governs the transfer of tangible research materials between two organizations, when the recipient intends to use it for his or her own research purposes. The MTA defines the rights and obligations of the provider and the recipient with respect to the materials and any derivatives.
Statements or directives from the federal, state, or local government; the University of California; or Berkeley Lab senior management that set a course of action, define acceptable conduct, or implement governing principles.
Example: Berkeley Lab Site AccessIntellectual Property Office
G. Recordkeeping Requirements
- IPO keeps records of all material transfer agreements.
- Researchers must track the location and disposal of third-party tangible research materials obtained under an MTA.
H. Implementing Documents
I. Contact Information
Licensing Manager
Intellectual Property Office
[email protected]J. Revision History
Date
Revision
By whom
Revision Description
Section(s) affected
Change Type
Re-write for wiki (brief)
