by Becky Mahurin

University researchers must write proposals in order to receive funding for research. But, can such proposal writing have a negative impact on future activities such as patent filings? The answer is, increasingly, yes.

Any disclosure of an invention prior to patent filing (see Patents Corner, January 1995 Discovery), even in speculative terms, constitutes what is termed "prior art." This means that the invention, at the time of patent filing, is no longer novel as there is literature that describes or postulates that invention. In the United States, inventors have a one-year grace period after such disclosure in which to file for a patent. In most foreign countries, "absolute novelty" is required; therefore, such disclosure would bar patent filing in those countries.

A research proposal submitted to any entity, even a federal agency, can be considered prior art. This presents problems. First, how is one to obtain research funding without a written proposal? Second, aren't research proposals kept confidential? And finally, often the proposal is generated long before an actual patentable discovery is made.

During the review period the confidentiality of a proposal is maintained. However, through the Freedom of Information Act others may request and receive copies of those proposals that have been approved for funding. Additionally, some agencies make titles and abstracts of successful proposals routinely available.

Obviously, the university supports grant-seeking activities for faculty. It is also recognizes that faculty will not always be able to predict if patentable matter will emanate from a grant. But we do ask that you exercise caution when submitting proposals that may produce patentable matter. Such caution could involve stamping pages that contain sensitive information "confidential" . Also, it is advisable to refrain from describing enabling information in the title or abstract. Remember that a proposal is considered a publication and can act as a patent bar.

If you have questions or concerns about your proposals, please contact me at 994-7868.

Becky Mahurin
Director of the Technology Transfer Office at MSU

© 2000 Montana State University-Bozeman
Discovery October 1995

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