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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