The TCO will carry out its evaluation by accommodating your plans for sharing this new knowledge with others. Ideally, and to preserve the greatest patent protection scope, researchers should disclose new inventions to the TCO prior to any public disclosure of the invention. Patent protection for an invention may still be available after a full disclosure of the invention, but only if patent protection is filed within a year following the enabling disclosure.
Another way to preserve the patentability of a new invention is by entering into a confidentiality agreement with the party receiving information about the invention. You can contact the TCO for assistance with execution of a confidentiality agreement. TCO must sign the confidentiality agreement as the authorized OSU signatory.
You should consult with TCO about the advisability of disclosing the invention even under a confidentiality agreement prior to filing for patent protection. Caution is urged when sharing your invention prior to any patent filing.
Marking Your Grant Proposal
If you need to submit an NIH grant application before a patent application has been filed, and if the unprotected invention is necessary to be included in the proposal to convey an understanding of the proposed project, check "yes" to the question: "Is proprietary/privileged information included in the application?" Also mark any section of the proposal containing the invention with this legend: "The following contains proprietary/privileged information that Ohio State University requests not be released to persons outside the Government, except for purposes of review and evaluation." Do not include proprietary information in the grant Abstract, since that section is regularly published.
While it is NIH policy to keep grant applications confidential and while reviewers are required to keep application information confidential regardless of whether it is marked proprietary, this additional designation may help to preserve invention rights. Checking the box and marking the privileged/proprietary information evidences an applicant's intent to protect potential patent rights. NIH will consider this before disclosing the application in response to a Freedom of Information Act (FOIA) request. Left unmarked, NIH will need a significant, substantive and detailed justification explaining how release of the information will cause commercial competitive harm in order to withhold any information in response to a FOIA request.