NSF and NIH Open Grant Proposals to Public Inspection

It is not prudent to wait until an NSF or NIH grant is awarded to start thinking about patent protection. The NSF has launched an Awards Abstract database. The searchable fields include a descriptive abstract, institution, principal investigator and grant number. The NIH equivalent is CRISP, Computer Retrieval of Information on Scientific Projects. With the information retrieved, grant proposals can be obtained through Freedom Of Information Act requests.

This is analogous to the graduate thesis cases such as In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986) where a doctoral thesis indexed and available to the public in a university library was deemed a printed publication. Public accessibility was considered the touchstone in determining when a reference constitutes a printed publication bar under 35 U.S.C.102(b). In re Hall, 781 F.2d at 898-99, citing In re Bayer, 568 F.2d 1357, 1359, 196 USPQ 670, 673 (CCPA 1978) and In re Wyer, 655 F.2d 221, 224, 210 USPQ 790, 792 (CCPA 1981). Accessibility is required, at least to the public interested in the art, to disclosure sufficient for one examining the reference to make the claimed invention without further research or experimentation. In re Hall, 781 F.2d at 899, citing In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.Cir.1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; and In re Wyer, 655 F.2d at 226-27, 210 USPQ at 794-95.

NSF and NIH grant proposals become available the day information sufficient to support a FOIA request that is posted to the NSF Awards Abstract database or to CRISP. Interested members of the public are able to obtain copies of grant proposals, which may lay out how to make and use what ultimately becomes a claimed invention. As a rule, the information is not posted until after the award is granted. The objective is not to lay open pending proposals to criticism from the academic community at large, but to permit the general public to learn how their tax dollars are being spent on basic research.

When does this happen? In the NSF Awards Abstract database, one of the searchable fields is "Initial Amendment Date," which falls between the award date and the start date for a grant. In a telephone call to an employee responsible for Policy at the NSF Division of Institutional and Award Support, we learned that awarded grants are posted to the database on the day of or the day after the "Initial Amendment Date." When in doubt, call an NSF Policy employee at the Division of Institutional and Award Support. The posting date for NIH grants may be similarly investigated.

As for accessibility, whether a grant proposal contains a sufficient disclosure is debatable. But ask yourself whether you want to defend a patent's validity by arguing to a lay jury that an inventor took hundreds of thousands if not millions of taxpayer dollars with only a vague explanation of what he or she intended to do with it.

What is the practical impact? For a patent application based on NSF- or NIH-supported research, a prudent practitioner should check the NSF Awards Abstract or CRISP database before making domestic or international patent filing decisions. And before launching a costly search and assessment of the validity or enforceability of a patent covering NSF- or NIH-supported research, whether as part of a due diligence investigation or in advance of litigation, the second step (after first confirming that maintenance fees were paid) should be a search of the NSF Awards Abstract database or CRISP, the results of which may obviate or significantly curtail the need for further investigation.