Reminders from the Intellectual Property Office
Invention and software disclosures. For IPO to have sufficient time to evaluate invention disclosures for commercial potential and patenting purposes, to fully assess software disclosures and clear such software with DOE for general release and licensing, investigators must disclose their inventions at least two months prior to the date of a publication, presentation, or other public disclosure (including, in some cases, the publication of an abstract for a meeting). Likewise, software developers need to provide software disclosures to IPO at least two months prior to the date of anticipated release.
NDA and MTA requests. If you need a Non-disclosure Agreement (NDA) or Materials Transfer Agreement (MTA), submit your request through the Innovation Portal. IPO will respond to your request within 10 business days to let you know if further information is needed or to confirm that a first draft has been sent. The overall period of time to conclude such agreement depends on the complexity of the agreement, the response time of the counterparty, and, and the NDA/MTA Team’s backlog of agreements. You can find out the status of your disclosure or NDA/MTA request on the Innovation Portal; view instructions here.
Reminders from the Strategic Partnerships Office (SPO)
“Pre-application” proposals for Department of Defense, Department of Homeland Security Broad Agency Announcements (BAA) and other funding opportunities. Notify the Lab’s Office of National Homeland Security, ONHS@lbl.gov, of all pre-application proposals. Those requiring SPO or ONHS review should be entered into eSRA: Select “Pre-Application” at question 2.d. Allow for a minimum of five business days for the SPO Contracts Officer review.
Background Intellectual Property (“BIP”) determinations. Some proposals ask for background intellectual property determinations. For proposals that require this, the Resource Analyst (RA) or Principal Investigator (PI) should use the activity “Request IP Review” on eSRA. The Intellectual Property Office will provide the RA/PI with the appropriate BIP reference numbers. The PI/RA should include this information in the eSRA proposal under “Does this proposal have background Intellectual Property? If yes, please provide the LBNL Disclosure or Patent Number(s) below.”
Terms and conditions for Cooperative Research and Development Agreements (CRADA) or Strategic Partnership Project (SPP) agreements with minimum funding requirements. Terms and conditions of CRADA or SPP agreements with funding less than $50,000 over the life of the project are subject to non-negotiable Lab standard terms and conditions. See updated guidance on the Minimum Funding Requirements.
Unfunded Collaboration Agreements and MOUs. SPO is often asked to review unfunded collaboration agreements and agreements entitled “Memorandum of Understanding (MOU).” MOUs are specific statements of intention defined in the RPM. They are not legally binding agreements, nor are they appropriate vehicles for obligating funds. Regardless of the document’s title, SPO will review the intent of the agreement with the Office of Lab Counsel for the best match to an authorized agreement type at the Lab.
Unfunded collaboration agreements contain firm commitments and deliverables, even when no funding is changing hands. Because each party will participate using “in-kind” efforts, a DOE-approved agreement may still be required. Lab researchers must have an approved funding source to charge their effort for participation.
For research consortia agreements, if you have not received DOE pre-approval to join the consortia, it is highly unlikely Lab will be able to accept these types of nonstandard agreements. See this SPO FAQ.