Protect IP *Before* Receiving Award

An upcoming “Celebration of Innovators” here at Baby It’s Cold Outside reminded me to remind all of yuns about the importance of protecting any unpublished data and intellectual property submitted as part of a federal grant application BEFORE said application receives an award (ie, funding).

In the course of my work, I regularly recognize IP in grant applications that should be reported to the Office of Technology Management (often called tech transfer) prior to submission and encourage the PI to do so … and then send a heads-up note to the appropriate licensing manager since I know the PI will not take the time to contact OTM. This Office is completely divorced from my office (different reporting lines & everything), so these folks were initially surprised to hear from me but appreciate the vigilance during grant review.

More importantly & instructively, also in the course of my work, I contact PIs with funded applications to invite them to contribute the narrative to a repository of successful proposals that serve as exemplars for other faculty. I have been dismayed to receive notes back saying there was too much unpublished data and unprotected IP to share the proposal, even internally (& who knows how many PIs who never respond keep silent for the same reason). Please ask again in a year or so, when protections have been made. After giving the PI the bad news that his/her funded proposal is actually in the public domain (open to FOIA requests) and their IP publicly disclosed, I immediately forward the distressing message to OTM to see if they can salvage anything. Even these salvage operations could be futile, which is a damn shame since the PI knew enough to think his/her IP needed to be protected – just no clue as to when or how.

Take home message: steps to protect IP (eg, invention disclosure) must be taken before a federal award is made, which means before the grant application is submitted. No matter how busy you are. Period.

4 Comments »

  1. Mentorless said

    1. What is, “NoA,” “Notice of Award?” Jees, how about some responsibility for acronyms?
    2. You are wrong about FOIA, public domain, and IP. Unpublished data and non-patented inventions are redacted from grant applications by FOIA officials. Indeed, FOIA officials actually CONSULT PIs when processing FOIA requests.
    Since most of the other information relevant to the application’s merit (such as %efforts, salaries, submitted and in-press manuscripts and references to them, and birth dates) is also redacted, the public has no way of evaluating the integrity of government grant review processes.
    Most PIs (aka, Pusilaminous Ingrates) know these facts. About the only frauds one can catch w/ FOIA are non-existent key-personnel (non-existent other personnel such as students, techs, and postdocs is not fraud) and fraudulent publications lists in PI’s profile. Profiles fraudulent in other respects such as degrees, age, and employment history are considered OK.

    Notice of Award is correct.
    The public disclosure (eg, federal grant award) must be “enabling” in the eyes of a patent examiner in the US Patent & Trademark Office, and this standard is very subjective; the inventor must patent the invention within 1 year of public disclosure in the US. In other countries, patent rights are lost immediately upon public disclosure of any sort. Sadly, most PIs do not know these facts.

  2. Mentorless said

    Oy veh.

  3. PhysioProf said

    This would make a lot of sense if you could convince the dipshits in a typical tech transfer office that their goal should be to protect as much IP as possible–even when its value is not already apparent–and not to “save money” by filing and prosecuting as few patent applications as possible. Patenting inventions is like playing the lottery; you have to buy as many tickets as you can afford if you want to have a chance of winning. And like the lottery, there is no way to predict the winning ticket ahead of time and thereby avoid the cost of buying a whole bunch of tickets.

    I have pretty much given up with the tech transfer office in my institution, since my discussions with them are always about whether the IP is “worth anything” and never about how best to protect it. Idiots.

  4. whimple said

    I also have given up on our tech transfer office. I don’t particularly feel bad about this: they make it such a hassle for them to figure out if the IP is “worth it” and I don’t have the time or energy to fight it. Motivation-wise, my potential monetary reward for IP is pretty small, I don’t get any academic credit in my department for IP, and I have this nagging suspicion that public Universities propped up by taxpayer dollars should be putting everything in the public domain anyway, so I don’t get too broken up about missed IP “opportunities”.

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