Report submission:report to the LBNL Library Committee

Draft presentation, Jan. 10, 2006

Corwin H. Booth (CSD)

Background

• Report submission to DOE and OSTI is a requirement of the UC contract

• Our performance is poor• The submission process tries to require (or

ensure) some things:— Patent review— Quality control via a Division Review (DR)— Some bookkeeping gets accomplished,

such as proper acknowledgments, reprint orders, etc.

• There are aspects of the submission that seem tedious and/or confusing

• §5.02Scientific and Technical Publications: http://www.lbl.gov/Workplace/RPM/R5.02.html

• §5.03Patents: http://www.lbl.gov/Workplace/RPM/R5.03.html

Some highlights of DOE Order 241.1ahttp://www.osti.gov/stip/o2411a.pdf

• 4. REQUIREMENTS: a. DOE will make STI broadly available, within applicable laws and Departmental requirements, to accomplish mission objectives and strategic goals, promote scientific advancement, satisfy statutory protection and public dissemination requirements, and ensure a fair return on Departmental and taxpayer investment.

• g. DOE will use best business practices to facilitate cost-effective management and availability of DOE’s STI.

• i. All DOE elements must make the results of scientific and technical endeavors broadly available in useful and acceptable electronic formats, including announcing such STI results to the central coordinating office.

From the DOE/UC contract

• The Contractor may use technical data it first produces under this contract for its private purposes consistent with paragraphs (b)(2)(i)(A) and (D) of this clause and the patent, rights in data, and security provisions of this contract.

• CLAUSE I.80 - DEAR 970.5204-3 ACCESS TO AND OWNERSHIP OF RECORDS (DEC 2000)— (a) Government-owned records. Except as provided in paragraph (b)

of this clause, all records acquired or generated by the contractor in its performance of this contract shall be the property of the Government and shall be delivered to the Government or otherwise disposed of by the contractor either as the contracting officer may from time to time direct during the progress of the work or, in any event, as the contracting officer shall direct upon completion or termination of the contract.

— (b) Contractor-owned records. The following records are considered the property of the contractor and are not within the scope of paragraph (a) of this clause.

• (iii) Patent, copyright, mask work, and trademark application files and related contractor invention disclosures, documents and correspondence, where the contractor has elected rights or has permission to assert rights and has not relinquished such rights or turned such rights over to the Government.

Clause I.97, c.1, I-160 (p. 263)

• (c) SUBJECT INVENTION DISCLOSURE, ELECTION OF TITLE AND FILING OF PATENT APPLICATION BY CONTRACTOR. (1) Subject invention disclosure. The contractor will disclose each subject invention to the Patent Counsel within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters. The disclosure to the agency shall be in the form of a written report and shall identify the contract under which the invention was made and the inventor(s) and all sources of funding by B&R code for the invention. It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention and whether a Manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure. The disclosure shall include a written statement as to whether the invention falls within an exceptional circumstance field. DOE will make a determination and advise the Contractor within 30 days of receipt of an invention disclosure as to whether the invention is an exceptional circumstance subject invention. In addition, after disclosure to the Patent Counsel, the Contractor will promptly notify the agency of the acceptance of any manuscript describing the invention for publication or of any on sale or public use planned by the contractor. The Contractor shall obtain approval from Patent Counsel prior to any release or publication of information concerning any nonelectable subject invention such as an exceptional circumstance subject invention or any subject invention related to a treaty or international agreement.

It’s really about the patents…

• (5) Publication Approval. During the course of the work under this contract, the Contractor or its employees may desire to release or publish information regarding scientific or technical developments conceived or first actually reduced to practice in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interest of DOE or the Contractor, approval for release or publication shall be secured from the Contractor personnel responsible for patent matters prior to any such release or publication. Where DOE’s approval of publication is requested, DOE’s response to such requests for approval shall normally be provided within 90 days except in circumstances in which a domestic patent application must be filed in order to protect foreign rights. In the case involving foreign patent rights, DOE shall be granted an additional 180 days with which to respond to the request for approval, unless extended by mutual agreement.

Where does this leave us?

• The rate-limiting step to obtaining laboratory clearance is obtaining clearance from patents— Patents Office is way understaffed— If a Record of Invention (ROI) form is filed

at conception of idea, Patent review can be very fast

— (It is also a contract requirement to file ROI’s)

• The library is starting toward giving report numbers only when report is received

• Role of reviewers will be left vague (will send a document around)

Further suggestions

• Web site for submissions needs improvement— Tim Lithgow at Patents should be consulted

for wording Patent-related questions• Division Review approval should be obtained

online— How best to do?

• Library forward report to named reviewer• author should be CC’d• author is ultimately responsible for interacting with

reviewer• Reviewer releases report with an email to the library

• Small sub-committee should review the website changes before going “live”

Patent Review

• LBNL has a very poor record compared to Stanford/SLAC regarding obtaining patents

• Does requiring patent review really help?— Perception is that it doesn’t help at the

report submission stage• Patent review DOES hurt:

— Review takes time• Therefore, most people submit manuscript to

journal, etc. and get review later

— Because of late patent review, the review is not likely to be useful

Patent Review

• SOLUTION: stop doing it this way!• Better education regarding patents is

necessary• Getting people when they are hired is only a

start• Lots of things can be done:

— Use the web better: have obvious links regarding patents on library site and during report submission process

— Have patent people talk at division meetings

— anything else?

Division Review

• To be clear: The Division Review (DR) issue is NOT about Reports Coordination, submission to OSTI, or Patent Review.

• DR is ONLY about whether a lab employee who is familiar enough with the content of a lab report should be required to review the report for content, grammar, etc.

• The library staff can be sure about acknowledgments and other required practices

Scenario 1: Keep DR

• First off, the role of the DR will have to be defined, and current recommendations are that the DR not be required to sign-off on content. Given that:

• Advantages:— We already have the system in place, it

just needs tweaking— Enforces some contact between author and

other division personnel• Disadvantages:

— System doesn’t work either for quality control or maintaining contacts

— Slows down the approval process, widely perceived to be a limiting factor in submissions to DOE/OSTI

Scenario 2: No DR lab-wide

• Advantages:— consistent with current levels of most

actual reviews— report submissions streamlined (should

help encourage report submissions)— Simplifies library involvement compared to

other scenarios (no reviewer data base)

• Disadvantages:— No required contact between author and

other members of their division

Scenario 3: DR left entirely up to divisions

• Advantages:— Provides greater flexibility

• Divisions can make decision regarding benefit• Machinery can stay in place whereby library

maintains list of reviewers, etc.

• Disadvantages:— More bookkeeping for the library staff— Most divisions will probably opt out— Author contact with other division

personnel will no longer be mandated