TREATMENT OF NIST's PROPRIETARY INFORMATION
Sections
5.07.01
PURPOSE
This subchapter states the policies and procedures for the disclosure
of NIST's proprietary information via a Non-disclosure Agreement. The purpose
is to preserve NIST's ability to pursue patent protection on inventions
by NIST employees when they are disclosing information upon which NIST
may
file for a patent.
5.07.02
SCOPE
This subchapter applies to all NIST employees.
5.07.03
POLICY
a. The vast majority of information and data developed by NIST
is public domain at the time of its development. NIST does not have "trade
secrets" that need to be protected. However, it may be advantageous to
NIST's mission to patent the technology. Accordingly, NIST may want to
avoid public disclosure of information on intramural inventions until such
inventions are filed in the U.S. Patent and Trademark Office.
b. If such a disclosure is made, NIST promptly issues a non-enabling
public announcement to comply with the statutorily-required competitive
process for licensing NIST technology. The non-enabling public announcement,
prepared by the Industrial Partnerships Program (IPP), provides a general
understanding of the nature of the invention without revealing enough information
for someone else to practice or duplicate it. That public announcement
is made to ensure fairness in accessing NIST technology. It is NIST policy
to avoid the preselection, or the appearance of preselection, by NIST employees
of the private sector recipient of information on a NIST invention.
c. Disclosure of information developed under a Cooperative Research
and Development Agreement (CRADA) may be restricted for a limited time,
as specified by the terms of the CRADA.
5.07.04
LEGAL AUTHORITY
35 U.S.C. 205
5.07.05
CONDITIONS FOR USE
a. Use the NIST Non-disclosure Agreement to preserve NIST's ability
to pursue patent protection on an intramural NIST invention upon which
NIST may file for a patent. This would apply when:
(1) NIST employees are disclosing information that is patentable subject
matter to non-U.S. government parties;
(2) They are contemplating the submission of an invention disclosure;
(3) During the time the IPP is evaluating an intramural invention; or
(4) After the OU Director has agreed that patent protection should be
sought on an intramural invention but the Patent Application has not yet
been filed with the Patent and Trademark Office.
b. CRADA project team members do not need a separate Non-disclosure
Agreement to disclose information on CRADA-related inventions to the CRADA
partner. The CRADA already provides for the protection of such information.
5.07.06
APPROVAL AND RESPONSIBILITIES
a. The NIST party desiring to disclose the information obtains copies
of the "Disclosure of NIST's Confidential Information" agreement and answers
the following "Due Diligence" questions:
(1) Name of NIST discloser:
(2) Why is this disclosure an important next in the R&D plan?
Have talks been held with the Industrial Partnerships Program to determine
the potential impact of this disclosure on subsequent patent protection?
(3) Describe the subject to be disclosed:
(4) Has this information been previously disclosed?
If so, what was disclosed? How? To whom? For what purpose? When?
(5) Proposed date for this requested disclosure:
(6) Identify the source of the information to be disclosed:
Is this information related to a CRADA?
Is this information related to a NIST invention not yet disclosed? Disclosed
via an invention disclosure but not yet filed with the U.S. Patent and
Trademark Office?
(7) NIST will disclose the information to:
_____________(Person within the Receiving Organization)
_____________(Organization)
(8) NIST will place a disclosure ("non-enabling") in a public media.
Identify the media to be used (more than one may be used):
_____________Commerce Business Daily
_____________Federal Register
_____________Trade journal (identify___________________)
b. The IPP representative for the appropriate OU Director assists in
responding to these questions. The responses provide the OU Director with
detailed information on circumstances of the planned disclosure. IPP arranges
for any required non-enabling public accouncement.
c. The responses to the "Due Diligence" questions and the Non-disclosure
Agreement are routed to the OU Director. The OU Director reviews and approves
each Non-disclosure Agreement and ensures that the conditions specified
herein for use of the Agreement are met.
d. The signed Non-disclosure Agreement is sent by the OU Director to
the Chief of the IPP for signature along with the responses to the "Due
Diligence" questions.
e. The IPP sends two copies of the Non-disclosure Agreement to the party
receiving the information for signature along with instructions to return
one of the signed originals. IPP retains the signed original and distributes
copies to the NIST discloser and the OU Director.