How Does Patenting Affect SBIR/STTR Data Rights?
Both patenting and SBIR protections are essential considerations, but patents and SBIR Data Rights involve very different types of protections. Sometimes these two types of protections compete with each other and force decisions by the small business.
When the SBIR technology, idea, concept, design, or method is visible to the naked eye – the SBIR firm should consider patenting. However, in the case of nonvisible technology, idea, concept, design, or method – such as computer software - protecting SBIR Data can best be kept secret under the government’s nondisclosure obligation. Keeping a secret from disclosure preserves its value, and the nondisclosure obligation on the part of the government preserves that value.
Patenting, on the other hand, involves public disclosure of the idea or concept that the SBIR firm wishes to protect. In exchange for this public disclosure of the idea, concept, design or method, one receives what is known as the “patent monopoly.” This exclusive right to practice an idea, concept or design is gained only after an extensive disclosure of the invention in the patent.
Once this SBIR Data is published in a patent, the government’s nondisclosure obligation with respect to the publicly disclosed SBIR Data terminates. Even if some SBIR Data has been disclosed in a patent, undisclosed SBIR Data can still checkmate a would-be infringer–so the patenting SBIR firm should keep on developing more SBIR Data. Even if a patent issues, SBIR Data not disclosed in the patent may be an edge over would-be infringers. Thus, the SBIR firm will want to disclose only the minimum amount of SBIR Data necessary to obtain the patent, and no more.
Additional details are available via SBA’s SBIR Data Rights Course, as well as the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) Program Policy Directive, effective May 2, 2019.
Updated by Kristin Stiner, March 2020