Research programs investigating new technologies, particularly those under development by universities and small businesses, are frequently funded by grants from governmental agencies and other sources.  Such grants usually require the submission of a proposal in which the applicant describes the objectives of the funded research and how the applicant expects to achieve these objectives.  Grant proposals often include a considerable amount of technical information.  If the proposed research is part of an on-going course of investigation, for example, the applicant may discuss the results achieved to date, including details that have not been published.  By submitting such a proposal, however, the applicant may be jeopardizing possible patent rights in any inventions arising out of the subsequent funded research.

 

A universal requirement for patentability in all countries is that the invention claimed in a patent application must be “novel” (e.g., not previously known or made available to the public).  In the United States, the novelty requirements are defined by statute in 35 U.S.C. §102, the relevant sections of which read as follows:

 

a.      the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

b.      the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States….

 

Thus, with respect to the inventor’s own acts, the United States has a one year “grace period”.  That is, an inventor has one year from his or her disclosure or offer for sale of any invention to file a patent application on the invention.  In contrast, nearly all countries other than the United States are so-called “absolute novelty” countries; there is no grace period and a patent application, to be valid, must be filed before any public disclosure of the invention.

 

A grant proposal has been interpreted by at least one U.S. court to constitute a “printed publication,”  making it prior art against a patent filed more than one year after the grant proposal became available through the Freedom of Information Act.[1]  The court acknowledged that the question of whether the grant proposal constituted a “printed publication” hinged on whether it was publicly accessible.  In this particular case, the grant proposal was found to be publicly accessible in view of the fact it was a) filed and indexed by title, author, institution of grant number, b) available to any member of the public through the FOIA, and c) cited by grant number in an article written by the proposal’s author.  The patent was consequently invalidated. 

 

It is difficult to precisely determine when a grant proposal becomes “publicly accessible.”  The answer is fact dependent.  Therefore, the submission of a grant proposal creates an uncertain degree of risk.

 

In an ideal world, of course, the aforementioned risks can be easily avoided by filing a complete and detailed patent application discussing all aspects of the planned research and the expected results before submitting a grant proposal for such research.  However, the costs of preparing such an application can be significant, depending upon the complexity of the technology, and there may be a reluctance to incur such costs prior to knowing whether in fact the research will be funded.  Perhaps more importantly, a detailed patent application often takes a great deal of time to prepare, which obviously can interfere with the applicant’s ability to meet grant proposal deadlines.

 

With these practical considerations in mind, the following alternative approaches should be considered in order to minimize the risk that a grant proposal will interfere with securing valid patent protection: 

1.      Keep the grant proposal as general as possible.[2]  Avoid including specific, detailed descriptions of the various approaches or methods that you plan to try in order to solve the defined technical problem.  In general, making a patentable invention involves determining how to achieve a certain desired result, not just defining the result that is being sought.  By omitting from the proposal the details of exactly what you intend to test and evaluate, it may therefore be possible to avoid disclosing the invention you would want to describe and claim in a subsequent patent application.

 

2.      If it is not practicable to adequately “sanitize” the grant proposal because of the funding agency’s requirements that any research program be described in detail, consider filing a provisional patent application before submitting the grant proposal.  The filing date of the provisional application can establish a priority date that can be used as a basis for further filings, both in the United States and in other countries.  A provisional application does not need to meet all the formal requirements of a “regular” (non-provisional) patent application and the government filing fee for such an application is relatively small.  However, it is critical that the provisional application include a disclosure which enables the use of the invention by others and meets other patent law requirements.  Additionally, a narrow provisional application may not provide adequate support for broader claims that the applicant may later decide to pursue, thus compromising the scope of protection that might otherwise have been obtainable.  For these reasons, although the Patent Office will accept the text of a grant proposal as a provisional application, having a patent attorney or agent involved in reviewing and supplementing the proposal before filing is strongly recommended.

 

3.      Although grant proposals to federal agencies may become “publications” under the Freedom of Information Act, certain steps can be taken to increase the likelihood that the information contained in a proposal is maintained in confidence.  If the relevant portions of the grant proposal are marked as confidential, this may exempt such information from being made publicly available through an FOIA request.  However, many non-federal funding organizations are not required to keep submissions confidential.  In fact, some organizations may have policies stating that any submissions received will not be kept secret.  Therefore, a grant applicant should frequently check an agency’s policies regarding secrecy and comply with any marking requirements of the agency if the applicant desires to exempt certain information from being publicly available.

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