II.9.2 Intellectual Property Rights

Criticism: The revised Circular could facilitate theft of intellectual property rights and undermine statutes such as the Bayh-Dole Act (35 U.S.C. § 200, et seq.).

Response: The proposed revisions to Circular A-110 would normally defer release of the data until after publication or presentation of research results at the researcher's volition and thus should greatly minimize or eliminate this potential problem.

FOIA also provides broad protection against the disclosure of trade secrets. See Section II.2, supra. To the extent that critics of data access perceive weaknesses in the protections afforded under that statute, those concerns should be addressed to Congress in the form of proposed amendments to FOIA itself.

As a practical matter, data that satisfy the requirement of having been used by the federal government in the formation of a policy or rule are unlikely to include the patent-related intellectual property protected under the Bayh-Dole Act. The asserted threat to patent rights is therefore somewhat of a red herring. In any event, agencies will retain discretion to refuse disclosure of material that violates applicable statutes, including FOIA and the Bayh-Dole Act, that protect intellectual property rights.

Depending upon the definition of "data" that OMB and/or the awardee agency adopts, only data directly leading to a publication might be accessible. Under this circumstance, the primary investigator would retain the intellectual property rights on data which have not been the basis for a publication. Therefore an investigator might only be required to provide access to data relied on in the presentation of results or formation of conclusions of a publication which might affect future policy.

Criticism: Under U.S. law, scientists have one year from the date of publication to file a patent application. Will allowing data to be publically available through FOIA threaten a scientist's foreign patent rights?

Response: Not if the data are published first, as would be required for the data to meet the requirements of the proposed policy. Foreign patent filings are limited if the data are already in the public domain.

Criticism: FOIA exemptions against disclosure of trade secrets and financial data may not apply to federally funded grantees.

Response: OMB should state its intention that the FOIA exemptions are to apply to federal award recipients. OMB should make this clear both in the proposed revisions to Circular A-110 and in the government disclosure policy notice accompanying each award. The proposed revisions to Circular A-110 should direct federal research agencies to review the requested data and to prevent disclosure of data that are within the FOIA exemptions.