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The Technology Transfer Process - Grants and the Patent Process
As noted in the previous section, grant submission can be an important source of patent applications.
However, they can also put your ideas into the public domain and be a source of disqualifying Prior Art.
First, when your grant is funded, the Abstract will appear in various databases of Federally Funded grants:
- The National Institutes of Health 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)
Clearly, your Abstract must not contain an enabling disclosure of your invention.
However, 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 can be obtained under the Freedom of Information Act (FOIA), the entire grant application is a public disclosure and hence becomes Prior Art.
To prevent this happening, you should submit the technical plan of the grant in a separate section and include as a header on each page the following precise words:
Confidential and Proprietary Business Information
There is a good article on different ways that academic activities can be deemed a “Publication” for Prior Art purposes in the April 2002 edition of Nature Biotechnology, as well preventative measures to avoid this.
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