When you have an invention or new discovery you need to file a Record of Invention (ROI) with the Intellectual Property Legal Group. The ROI is used to inform both BNL and the Department of Energy (DOE) of the inventions and discoveries made at the laboratory and is the starting point for preparing a patent application if the Office of Technology Commercialization and Partnerships decides to protect inventions that may be patentable. As part of your obligations as a BSA-employee you must assign title (ownership) to any patentable invention to BSA or, to the DOE if BSA declines title. In the event that the DOE declines title to the invention you have the option to request a waiver from DOE and take title to it. If a waiver is granted, you may file or continue prosecution for those patent applications on your own or through your own private patent agent/attorney.
The ROI form which must be printed out, completed fully and signed by the appropriate parties as indicated. Instructions for filling out ROI form (PDF).
The Office of Technology Commercialization and Partnerships evaluates the commercial potential of the inventions described in the invention disclosures received by the Intellectual Property Legal Group, determines whether to protect the invention and develops the commercialization strategy for those technologies recommended for patenting.
If you are interested in learning more about commercialization, please contact the TCP member with whom you normally work or Connie Cleary at 631-344-3035.
The Intellectual Property Legal Group (IPLG) provides legal advice on intellectual property matters affecting the Laboratory community at large, the Office of Technology Commercialization and Partnerships and research staff. IPLG provides legal review of Material Transfer Agreements and Non-disclosure Agreements, which must be signed by duly authorized representatives before a BNL researcher can discuss or work with an outside institution.
IPLG guides the Lab on intellectual property matters, including but not limited to:
Would you like us to present to your group? Contact us for more information and to schedule a time.
A non-disclosure agreement (NDA) is a legally binding contract between BSA and another institution(s), which is intended to protect information considered to be proprietary or confidential.
These agreements are negotiated and executed by the Intellectual Property Legal Group. Researchers do not have the authority to sign NDAs on behalf of BSA.
Before entering into a non-disclosure agreement with an outside organization, consider the following.
There are a number of provisions in an NDA which are not addressed by these points, so it's important to realize that an NDA can negatively impact your ability to conduct research. Therefore, an NDA may not be warranted in all circumstances.
All potential NDAs are to be forwarded to the Intellectual Property Legal Group. At least two weeks are needed to negotiate and fully execute an NDA.
DO NOT discuss the intellectual property until the NDA is signed by both parties.
Materials produced by researchers at BNL may be of interest to another institution, and may be transferred at no-cost (or for cost of materials) for evaluation or for non-commercial research under a Material Transfer Agreement (MTA). Depending on the circumstances under which the material was developed such material may be transferred to industry for a number of reasons (e.g., testing, feasibility studies, etc.). This transfer is usually temporary and can initiate a more formal working arrangement. Or, you may have research materials that you would like to receive from another institution to fulfill your research plans. In either case, a material transfer agreement may be used to facilitate the transfer. All MTAs covering a material transfer must be reviewed by the Intellectual Property Legal Group to ensure that BNL may receive or provide such material.
BNL scientists have many different options for working with industry and academic institutions. The various mechanisms include Cooperative Research and Development Agreements (CRADA), Work for Others (WFO) and Agreement for Commercializing Technology (ACT). BNL scientists can participate as a sub-contractor to a small business which is applying for SBIR or STTR funds.
TCP helps BNL scientists:
If you are interested in learning more about the various sponsored research programs, please contact the TCP member with whom you normally work or Mike Furey at 631-344-2103. More about sponsored research.
The center is responsible for developing major proposal opportunities that fit BNL's strategic objectives across all science and technology disciplines. The center is an expert resource for the laboratory to assure BNL proposals are professionally prepared, reviewed and delivered, reflecting quality and innovative thinking that further enhances BNL s reputation and competitive position. The proposal center serves the laboratory in stewardship of the proposals process, focused on proposals to non-DOE sponsors. If you are interested in learning more about the proposal center, please contact Robyn Rock at 631-344-5468.
Technology Maturation Fund - The Technology Maturation (TM) fund is allocated for the commercial development of promising early stage BNL technologies. The strategic objectives of the fund are to assist BNL in licensing such technologies more effectively, to develop opportunities for sponsored research funding and collaborations, and to expedite the transfer of promising new technologies into market deployment. With these objectives in mind, the fund seeks to support innovative research aimed at extending preliminary observations, establishing proof-of-principle, and enhancing (or generating) BSA intellectual property positions.