Research Enterprise has been examining the NIH’s representation of Bayh-Dole. So far we have seen that the NIH persists in citing a 1995 document that gives “guidance” that the Supreme Court in Stanford v Roche (2011) rejected. But the NIH hasn’t bothered to take down the document or revise it, or change any copy on the web that relies on it. We have also seen that the NIH apparently doesn’t understand much of anything about how Bayh-Dole operates in its substantive provisions. Most everything that matters, apparently, has to do with the finer points of paperwork compliance. Let’s drive that point home by looking at some NIH guidance for reporting, “Patents Part Two: A Closer Look at Reporting.”
The guidance here takes the form of general advice about managing inventions for patenting.
Here we cover types of patent applications, invention reporting requirements, and compliance advice. But first, a word to the wise.
And the word to the wise?
Patent Before Public Disclosure
When it comes to your invention, you should be thinking “first comes patent, then comes public disclosure.”
In other words, before publicly disclosing any details of your invention, such as in a publication, apply for a patent.
This is strange advice. First, in the US there’s a one-year grace period for publication before filing a patent application. Thus, the NIH apparently argues that obtaining the right to exclude others from practicing an invention in foreign countries is more important than announcing research results for others to use. Don’t even go to the problem of the added cost of going after foreign rights up front. One patent attorney I worked with for a long time once said (I paraphrase), “I’ve never seen a university foreign patent amount to anything.” The word to the “wise” then is to be sure to get those useless foreign patent rights before anything else. Continue reading