A Guide for Inventors at INL — 2017 9 The Basics of Intellectual Property Ownership of intellectual property INL employment agreements state that any IP that is: related to INL’s business, arises out of work done for INL, arises out of any proprietary information produced while working for INL, or is made using company time, facilities, or materials is owned solely by INL. This means that even inventions devel- oped at home, on personal time, or on a personal computer may be owned by the company if they are related to the work performed for the company by the inventor. If there are questions regarding who owns the IP, TD and Legal can review each unique situation and make a determination. They may request the submission of an Invention or Software Disclosure Record (IDR or SDR) or a Report of Outside Activities Form (480.05) to gather the necessary details. Even if INL determines that it owns the IP, the inventor may request to obtain a license from INL. Alternatively, INL may release the invention/software to DOE, which may then license or otherwise grant access to the inventor and the public. Addi- tionally, the director of TD may decline to assert ownership in the IP, based on recommendations of potential stakeholders. If this occurs, DOE retains ownership of the IP and the inventors or authors can request ownership or a license from DOE-CH (Chicago) patent counsel. Patents and the patenting process A patent can be viewed as a property right, similar to ownership of a house or car. It can be bought, sold or leased. The patent is a written document that is accessible to the public. It includes a specification (description), drawings (illustrations or figures), and claims of the invention. Patents are products of legal systems, and only apply to inventions that fall within legally defined cate- gories. Generally speaking, most patents are utility patents, which include process, machines, manufacture, compositions of matter, articles, some computer programs and methods (including methods of making compositions, methods of making articles and methods of performing business). Frequently Asked Questions For Technology Transfer Can I publish and get a patent?Yes, findings can still be published, and disclosure toTD should not alter the publication timetable. However, because publishing can affect the ability to obtain a patent, it is best to submit an invention disclosure at least three months prior to publishing or communicating findings in a public forum. What is my role in the screening process? Inventors typically meet withTD staff to discuss the invention and clarify aspects of the disclosure. Once a recommendation is made by the BEST committee on whether to pursue patenting,TD will contact the inventor to discuss the outcome. What effect does a license have on the inventor’s ability to do research? Research using a licensed invention can continue, even if it is exclusively licensed.The U.S. government will always retain the right to use licensed inventions for research and government purposes.These rights apply to work done by INL. What if an industry partner funded the research and invention?TD will review the terms of the contract, send a copy of the disclosure to the company, determine the company’s interest, and take action based on the company’s decision. Common Ownership Questions Who owns the rights to discoveries made outside of the lab by INL employees, for example, when consulting? The ownership of inventions made during consulting depends on the terms of the consulting contract. It is important to clearly define the work scope within the contract to minimize issues with inventions from INL research.TD should be consulted on IP terms in agreements. What if the invention was created with someone from another institution? Absent an agreement that states otherwise, generally, the invention will be jointly owned between INL and the other entity.TD works with the partnering organization to decide on the management of the invention.