Grants and the Patent Process

Grants, and in particular federal grants, are the life blood of university research.  Work performed under a funded grant can lead to innovation and associated intellectual property (e.g. patents, copyrights, trade secrets and know-how).  However, care should be taken in the preparation of grant applications and grant proposals to avoid, particularly with respect to patents, unwanted and/or unnecessary public disclosure.

An invention is not patentable in the U.S. if it has been described in a printed publication or otherwise known to the public more than one year prior to the filing date of the patent application.   In most foreign countries, the right to obtain a patent is lost immediately upon the first public disclosure.  To be an invalidating reference, the document (when viewed alone or in combination with other available references) must be sufficiently clear and enabling to permit one of ordinary skill in the art to practice the invention.  For these reasons, care should be exercised when drafting documents for submission as a grant application or proposal.

For these reasons, you should be aware that the National Institutes of Health (NIH) places information about awarded grants, including project title, name of the PD/PI, and the project description on the RePORT Web site. Moreover, when your grant is funded, the Abstract will appear in various databases of Federally Funded grants; for example:

  • The National Institutes of Health (NIH) maintains the CRISP Database;
  • The National Technical Information Service (NTIS) maintains the Federal Research In Progress (FEDRIP) Database which contains information on grants from 12 agencies (including NIH).

Therefore, you want to be certain that your Abstract must not contain an enabling disclosure of your proposed work that may lead to, or itself describe, an invention.  You should also be aware that one court (E.I. du Pont de Nemours & Co. v. Cetus Corp., 19 USPQ 2d 1174 (N.D. CA 1990) has held that since a copy of the entire grant proposal was available upon request under the Freedom of Information Act (FOIA), the grant application was a printed publication accessible to the relevant public prior to one year before the date of application for patent in the U.S., and hence was prior art within the meaning of 35 U.S.C. 102(b).

For these reasons, we at OTD, and generally the federal funding agencies will discourage the disclosure of proprietary or patentable subject matter.  Generally you should avoid such disclosures in the grant application unless it is believed that they are necessary to sufficiently describe the research to thereby secure the desired funding.  Under these circumstances, you should attempt to work within the exceptions to FOIA disclosure requirements.

To avail yourself of certain exceptions to agency disclosure of grant documents under FOIA, you can submit proprietary information in the technical plan of the grant application in a separate section and include as a header on each page the following words:
Confidential and Proprietary Business Information

Please note that since each agency provides specific procedures for identifying proprietary information included in a grant proposal, or pages of a proposal, you should carefully follow the agency procedures at the time of submission of the application, as provided in the application guide.

For example, the NIH Grants Policy Statement addresses the “Availability and Confidentiality of Information” (including a discussion of FIOA) in Section 2.3.11 and the accompanying subsections. See: http://grants.nih.gov/grants/policy/nihgps_2012/nihgps_ch2.htm#info_availability_confidentiality

If you have a question about how to proceed with regard to a potentially patentable technology and a grant application, you can contact OTD.