Can Public Universities Patent Their Research?: The Tension Between Open Records Laws and Patentability
57 Pages Posted: 29 Sep 2020 Last revised: 11 Dec 2020
Date Written: August 21, 2020
Under state open records laws, which typically preference public access to governmental records, various documents relating to research can be “public records” accessible to the public through an open records request. In many states, such as Iowa, these laws apply just as much to public universities as they do other governmental units. The accessibility of a public university’s documents under state open records laws presents a particular patentability problem. A public university may not be entitled to a patent on inventions developed by university faculty due to a fundamental rule of patent law—that an invention cannot be patented if it was previously described in a printed publication. Under blackletter patent law, the touchstone for determining whether something is a “printed publication” is whether it was “publicly accessible.” And documents available under a state’s open records law would certainly seem to be “publicly accessible.”
This article takes seriously the idea that documents associated with research conducted by faculty and staff of public universities in the United States constitute “printed publications” or are “otherwise available to the public” for purposes of patent law’s novelty requirement. Whether this is actually the case turns out to be surprisingly complex and depends in part on the specifics of each state’s open records laws. This article builds on existing work in this area by rigorously analyzing the Federal Circuit’s law on printed publications, examining the question under post-AIA law, and focusing specifically on Iowa’s open records law, before concluding with a specific recommendation for Iowa.
Keywords: patent, university, innovation, intellectual property
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