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How to Prevent Grant Proposals from Barring Patent Protection

Grant proposals are the life-blood of the University's research laboratories. However, faculty should be aware that an invention is not patentable in the US if it has been described in a printed publication more than 1 year prior to filing a U.S. patent application and foreign filing rights are lost immediately. In DuPont v. Cetus, a federal court held that an NSF grant proposal constituted a publication because it was sufficiently accessible to interested persons. The grant was considered accessible because it had been indexed and could be obtained through a request under the Freedom of Information Act (FOIA). Since it was indexed more than one year prior to filing a patent application, it constituted a patent bar.

It would therefore be possible for a research scientist, with a long-term grant, to propose a course of research and speculate on findings. Then, when the studies are concluded, this same scientist could find that the technology developed during the course of the research is barred from patent protection by the researcher's own proposal.

To prevent a bar, and to comply with the regulations and exceptions of the FOIA, each individual page should be marked "Confidential" and a legend affixed to the front page that states "Confidential. This document, or portions of it, contains confidential information that is, or may become, the subject of a United States patent application and is important to future commercial efforts based on such confidential information. Accordingly, this document and the confidential information contained herein are exempt from disclosure under the Freedom of Information Act, Sections 552(b)(3) and (b)(4) of Title 5 of the United States Code and corresponding regulations of United States government agencies."

In addition, a cover letter should accompany each grant proposal submitted to an agency of the federal government. The letter should provide a rationale for keeping the proposal confidential and request that the University be notified of all requests the agency receives for copies of the proposal under the FOIA. As an example, the cover letter should state:
 
 

Dear ____________,

The accompanying grant proposal contains confidential information that is, or may become, the subject of a United States patent application and is important to future commercial efforts based on such confidential information. Disclosure of this document and the information that it contains may cause substantial harm to such commercial efforts. Accordingly, this document and the confidential information contained herein are exempt from disclosure under the Freedom of Information Act, Sections 552(b)(3) and (b)(4) of Title 5 of the United States Code and corresponding regulations of [agency]. If any person or entity should request a copy of this document or any portions of it, the University of Cincinnati and [Applicant] ask that such requests be provided to [Applicant] and the University Patent Officer, as provided in Executive Order No 12600.

Thank you for your consideration.

Sincerely,

[University of Cincinnati Sponsored Programs Office Official]
 
 

In addition, some changes in the language used in the proposal could help future patentability. If possible, avoid direct and definite predictions concerning the results of the research. Statements in a proposal that "the research should lead to outcomes such as ..." or "I believe that the research will result in ..." may constitute a public disclosure of a potential invention.

The Dept. of HHS specifically requires that any requests for grant applications submitted under the Freedom of Information Act be reviewed by the principal investigator before release, affording an opportunity for deletion of confidential information. Including the following disclaimer at the top of the specific aims section of a grant application will help ensure that proprietary rights are maintained:

"The following information is proprietary and confidential and may not be released without
the prior written approval of the principal investigator. "

 For additional information, see SRA Journal/Insight, Spring 1998, pp. 69-72.










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