Strategies to Preserve Patent Protection when Writing Proposals and at Early Stages of Projects
In academia, it is important for faculty to secure research funding, present, and publish results. However, publications, poster presentations and other public disclosures of potentially patentable information to anyone outside MSU can compromise patentability, and thus limit commercial potential. This can inadvertently happen during the proposal process. The purpose of this document is to provide approaches to consider for protecting potential intellectual property through the proposal process.
Steps that can be taken include:
Avoid providing enabling patentable material in the abstract, as it is typically published when a proposal is funded. “Enabling” details describe how something is done, rather than what is done or the results of doing it. The TTO is available to consult on what may be considered “enabling” material.
Alerting the Funding Agency of Patentable Invention Material
Follow the rules of the funding agency in the Request for Proposals regarding marking and handling confidential/proprietary information. The following template letter should be provided to the agency:
The accompanying grant proposal contains information that is or may become the subject of a United States patent application and that is important to future commercial efforts based on such confidential information. Disclosure of this document and the information it contains may cause substantial harm to such commercial efforts. Accordingly, this grant proposal and the confidential information contained in it 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 the corresponding regulations of [the Agency]. If any person or entity should request a copy of this document or any portion of it, Montana State University and [Applicant] ask that notices of such requests be provided to [Applicant] and the Technology Transfer Office at Montana State University as provided in Executive Order No. 12,600. Thank you for your consideration.
[Your Name Here]
Funded proposals to federal granting agencies are subject to FOIA, and can be considered public disclosures if steps are not taken to identify and manage the intellectual property that is written into the proposals. Correctly predicting an anticipated invention in a grant proposal, even without any supporting research data, may be sufficient to bar patentability.
If possible, avoid predictions of research results and disclosure of existing technologies by leaving out enabling information.
Marking Patentable Information in the Proposal
If enabling information is included in the proposal, it may be possible to protect it by marking it as Confidential. Identify where the specific confidential information is in the proposal, and mark the individual page or area of text and figure as "Confidential, Proprietary Information of Montana State University." The legend provided below should be included with the grant proposal at the time of submission as a footer or header in the proposal:
This document, or portions of it, contains confidential information that is or may become the subject of a United States patent application and that is important to future commercial efforts based on such confidential information. Accordingly, this document and the confidential information is 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.
Progress Reports and Program Meetings
If the project requires “kick-off” meetings or program review meetings, check with your Program Officer to find out if the reports or meeting presentations can be kept confidential or marked as confidential proprietary using the same guidelines as marking the proposal. If adequate confidentiality cannot be assured then avoid including enabling information in the project reports and presentations if at all possible.
If you are sharing potentially patentable material to proposal partners outside the university, work with the Office Research Compliance or consult with the Technology Transfer Office for guidance on the need for a Confidentiality Agreement(s).
Consult with the Technology Transfer Office
The above steps provide guidance but it is best to consult with the TTO if you are including potentially patentable material in a proposal to avoid an inadvertent loss of IP rights.
In some cases it may be necessary to give a detailed description of an existing or predicted invention in a grant application. In such case, the invention may need to be protected with a provisional patent application filing before the grant proposal is submitted. This filing offers only limited protection, and is only valid for 1 year. MSU does not sponsor speculative patenting, so in order for that provisional patent to be converted to a full non-provisional patent application, TTO must find a licensee who can sponsor patent prosecution before the provisional lapses. This is generally very difficult for such an early stage technology, resulting in the IP being lost.
Therefore, avoiding disclosure is the best strategy when possible, and the filing of a provisional patent application is a backup approach, to be used only in cases where disclosure is important or required.