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Tip Sheet Volume
5:1
Publications and Other Public Disclosures
Iowa State University is committed to the public
disclosure of the results of its activities. All public disclosures should take
into consideration the impact of the disclosure, including patent
protection. In addition, consideration must
be given to the contractual requirements for disclosures made utilizing
industry funding. These issues are further addressed below:
What is a public disclosure?
A public
disclosure by an ISU employee occurs every time information about a
research project is shared with individual(s) that are
not ISU employees and who have notsigned a confidentiality
agreement to receive the information. A public disclosure can be a formal
presentation, an informal discussion, a published journal article,
information posted on a web site, and even notes jotted on a napkin and
shared during a social event. For clarification, University seminars are
considered public disclosures because they are open to the public, while a
lab meeting would only be a public disclosure if people external to the
lab and ISU are included.
What are the contractual
obligations prior to a public disclosure?
If industry
has provided funding for the research, the research contract will contain
specific information about the obligations to the company prior to a public
disclosure. These obligations typically include allowing the company to
review the public disclosure prior to when it occurs. The
purpose of this review is to determine if any company-confidential
information has been included in the disclosure (this only applies if there
is confidentiality language in the research contract or a separate
confidentiality agreement has been signed) and to determine if there is an
patentable information that the company would like protected before it is
disclosed.
The results of
the research are not considered confidential information. The company can
not prevent you from disclosing the information, but can delay the
disclosure until the information is properly protected, usually by a
provisional patent.
It is very important to remember that the contractual obligations apply
to all public disclosures and not just journal submissions.
How
can a public disclosure affect patentability?
Public
disclosures of information which may be important to a patent application
and/or materials related to an invention, made without the protection of a
confidentiality agreement will likely have an effect on patent protection.
In the United States, a patent application may be filed up to one year
following the first (non-confidential) public disclosure of the invention.
However, in foreign countries, the patent application must be filed prior to
any public disclosure. International patent protection may be
important to a company when determining the commercialization strategy; as
more companies focus on international markets, this issue becomes more
important. The impact of public disclosure applies to all research,
regardless of the funding source.
All public
disclosures that contain information that describes an invention should be
reviewed by ISU’s Office of Intellectual Property and Technology Transfer (OIPTT)
prior to disclosure.
Additional Information
Additional Tip Sheets regarding confidentiality include
Volume 1:9 and Volume 2:9. A statement of ISU’s Principles and
Guidelines governing sponsored research and scholarly activities can be located
at http://www.ospa.iastate.edu/principles_and_guidelines.htm
If you have any questions about this tip sheet please contact:
Lisa Lorenzen, 2810 Beardshear, Phone: (515) 294-0926, Email: llorenze@iastate.edu
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