The nondisclosure obligation of the government, and the accompanying technical data rights protection for the SBIR firm, attaches to technical data generated under an SBIR contract. To the extent that the SBIR firm discloses one, some, or all of its technical data to the public, it loses the protection rights that it had in that data, but only in the data disclosed when it is disclosed.
The disclosure of technical data in a patent application, which eventually becomes public, sacrifices the protection that such data would continue to receive had it not been disclosed. While admittedly the firm does receive patent protection for the concept or the idea that the patent protects, the protection for data disclosed in the patent application that eventually becomes public is sacrificed. This loss of protection occurs not by virtue of the patent application process per se, but because of the disclosure of the technical data to the public that occurs when the patent is published. Patenting involves giving up the nondisclosure protection for technical data that must be disclosed to obtain the patent in exchange for the patent monopoly over the concept.
I caution firms to be very careful in patenting. They need to decide whether the protection of the idea is as important as the protection of the technical data. For different technologies, the answer to this question will differ. The software developers never (or rarely) patent; the materials and apparatus developers nearly always patent. The "black box" developers sometimes patent and sometimes not, depending on what's in the box. As a general rule, if your SBIR technology is obvious to the naked eye or to reasonably easy inspection or analysis, you may have to patent to protect it. If your SBIR technology is not obvious (e.g., software), you can protect it with secrecy and use that secrecy to develop a technology "lead" that competitors cannot easily overcome.
The following contents do not represent the view or official positions of the Department of the Navy of any other government agency, nor does the presentation of such materials represent an endorsement or approval of the contents thereof by the Department of the Navy.
The following contents do not represent the view or official positions of the Department of the Navy of any other government agency, nor does the presentation of such materials represent an endorsement or approval of the contents thereof by the Department of the Navy.
The following contents do not represent the view or official positions of the Department of the Navy of any other government agency, nor does the presentation of such materials represent an endorsement or approval of the contents thereof by the Department of the Navy.
