BNL Home

For BNL Staff

Reporting an Invention

When you have an invention or new discovery you need to file a Record of Invention (ROI) with the Intellectual Property Legal Group (IPLG). The ROI is used to inform both BNL and the Department of Energy (DOE) of the inventions and discoveries made at the laboratory. The Office of Technology Commercialization and Partnerships (OTCP) evaluates the commercial potential of the inventions described in the ROI and determines whether to protect the invention by patenting. 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).

Download ROI Form (.doc)   Questions? Contact Dorene Price.

Reporting Copyright Work (Excluding Software)

For any originally authored work such as scientific or technical document that is not being published in academic, technical or profession journals, symposia, proceedings or other similar venues, you may file a Copyright Work Disclosure form.

Copyright Work Disclosure Form (.doc)   Questions? Contact Dorene Price.

Reporting Software

A software abstract and disclosure should be submitted before you distribute the software to anyone outside BNL or DOE, even if distributed as open source software. The OTCP staff and Dorene Price, the Chief IP Counsel will work with you to develop the distribution strategy that best meets the needs of the Lab, research and potential users.

Copyright Software (.doc) Open Source Software (.pdf)

Questions? Contact Dorene Price.

Intellectual Property

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:

  • Maintaining an adequate lab notebook.
  • Determining whether an invention is patentable.
  • Implementing the open source software (OSS) process for your OSS and assessing a repository to host the software.
  • Intellectual Property presentations providing an overview of copyright and patent law including a perspective on these legal doctrines from the point of view of the researcher.

Would you like us to present to your group?  Contact us for more information and to schedule a time.

Non-disclosure Agreements

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.  

  • The NDA will contain terms and conditions that you will be required to abide by. For example, you will have to keep accurate documents of all information exchanged (information that is received and disclosed, orally as well as in writing).
  • Your ability to do research and development related to the proprietary information may be impacted. For example, the scope of your research may be limited to a narrow purpose defined in the NDA.
  • BNL researchers should limit the availability of information exchanged and the amount of proprietary information received and/or disclosed.
  • ONLY disclose information designated as proprietary information to those individuals whose receipt of information is necessary for the NDA purpose (i.e., only those who have a need to know consistent with the purpose in the NDA).

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.

Material Transfer Agreements

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.

Sponsored Research

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:

  • Identify appropriate funding opportunities provided by federal agencies.
  • Submit grant proposals.
  • Secure DOE approval for sponsored research activities funded by federal (non- DOE) and non-federal entities.
  • Negotiate and execute CRADAs and WFOs.

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.

Proposal Center

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 Michael McAndrew at 631-344-6056.

Resources for Commercialization

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.

Follow Us on YouTube Follow Us on Twitter RSS Feed