Patentability and Grant Proposals.

[FunkySpaceMan74]

Thanks for taking the time to read this and hopefully respond with some useful information.

Well, I'm going to apply for a grant to help fund my invention. I was doing some research online and found that a grant proposal may have a negative impact when it comes time to patentability. To my understanding, a patent may not be allowed because the information in my grant proposal may be considered "printed publication" and would not be patentable due to the Statutory Bar for patentability. I also read online that if the Grant Proposal was marked as Confidential then it would be exempt from the Statutory Bar under patentability.

So my question is this: In order to have my grant proposal considered as "Confidential", do I need to have a patent attorney mark it as Confidential? If I put the following in my grant proposal, would that make it Confidential?

CONFIDENTIAL

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.



Any information regarding my issue would greatly be appreciated. Thanks again for taking the time to read and respond to this.

Read ya later**************...

 

[divgradcurl]

Thanks for taking the time to read this and hopefully respond with some useful information.

Well, I'm going to apply for a grant to help fund my invention. I was doing some research online and found that a grant proposal may have a negative impact when it comes time to patentability. To my understanding, a patent may not be allowed because the information in my grant proposal may be considered "printed publication" and would not be patentable due to the Statutory Bar for patentability. I also read online that if the Grant Proposal was marked as Confidential then it would be exempt from the Statutory Bar under patentability.

So my question is this: In order to have my grant proposal considered as "Confidential", do I need to have a patent attorney mark it as Confidential? If I put the following in my grant proposal, would that make it Confidential?

CONFIDENTIAL

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.



Any information regarding my issue would greatly be appreciated. Thanks again for taking the time to read and respond to this.

Read ya later**************...

If you mark the documents as "confidential," and otherwise adhere to whatever confidentiality rules and procedures the granting agency uses, then you are right, the grant proposal should not be considered a "public" document and therefore potential prior art. See http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2128_01.htm#sect2128.01.

You may want to talk with your granting agency to find out how they deal with confidential materials, and what THEY will withhold from a FOIA request, and how to mark the documents so that they WILL be held if a FOIA request is made.