Kilpatrick Townsend’s Joseph R. Snyder, PhD, recently presented on “Confidentiality & The Small Business Innovation Research Grant Process.” He discussed how to handle intellectual property (IP) and confidentiality in interactions with potential partners and investors.

Six key takeaways from the presentation include:

  1. The Small Business Innovation Research (SBIR) program and the Small Business Technology Transfer (STTR) program encoura
  2. ges small businesses to engage in research and development to commercialize their products by awarding grants. The grants for Phase I can be up to $256,580 and a Phase II awards can be up to $1,710,531. The standard application dates are January 5, April 5 and September 5. 
  3. It is important to understand that an awarded application is subject to a Freedom of Information Act (FOIA) request. Therefore, it is key that applicants protect their IP and confidential information properly
  4. In order to protect your confidential and proprietary information such as patentable ideas, trade secrets, privileged or confidential commercial or financial information, from a FOIA request, applicants must identify this information at the time of application submission.
  5. By checking “Yes” to the question of “Is proprietary/privileged information included in the application?” and clearly marking each line or paragraph on the pages containing the proprietary/privileged information with a statement similar to: “The following contains proprietary/privileged information that (name of applicant) requests not be released to persons outside the government, except for purposes of review and evaluation” will prevent release of the information.
  6. If an applicant fails to identify proprietary information at the time of submission, a significant substantive justification will be required to withhold the information if requested under FOIA.
  7. In addition, a provisional patent application can be prepare and submitted to the United States Patent and Trademark Office (USPTO) around the time the grant application is submitted to help ensure protection of your technology.