hanced, or corroborated in the performance of Department [of Health Education and Welfare]— funded research were under control of university patent-management offices...

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These innovations included drugs and therapeutic agents which promise great benefit in improving health and improving the quality of life of mankind.

II. An Investigator's Ideas, Properly Developed, Often Are Transformed Into Commercially Valuable Property.

It is clear from the preceding quotation that an investigator's ideas and research efforts often result in patentable innovations. It should also be apparent that when this work has matured from a concept to a patented innovation it is transformed into identifiable “intellectual property" and its owner acquires substantial protection under U.S. patent and property laws. Furthermore, an idea or innovation may be commercially valuable, even absent the protections of a patent, if it is managed in a manner suitable to acquiring and preserving the character of a trade secret.

Patented innovations are of little direct concern in this case because of their protection in law. Of direct and substantial concern to amicus, however, are those inchoate forms of intellectual property represented by an innovation which may be patentable, but is not yet at a stage where it can be patented, and those insights which may form the basis for a commercially valuable trade secret. The possibility of obtaining a patent is jeopardized and, in some cases foreclosed, by uncondi

Report of the President's Biomedical Research Panel-Disclosure of Research Information, at 15. DHEW Publication No. (OS) 76-513, June 30, 1976.

tioned disclosure prior to the filing of the patent application. A trade secret loses its value upon disclosure to the public.

Patent laws of both the United States and foreign countries are drafted against the interest of those parties making or permitting publication of their innovation prior to the filing of a patent application. In the United States, publication of an unpatented invention initiates a one-year statutory period for filing a patent application on the innovation or valid patent protection is precluded. In most foreign countries valid protection is precluded if a patent application had not been filed prior to the date on which the information was first disclosed.

Within the patent laws, publication has been broadly defined as any unconditional disclosure by its owner of information on an innovation of interest. For example, even a thesis available on the shelves of a university library but not necessarily reviewed by any researcher has been deemed in the context of the patent laws, to be a publication of the innovation disclosed therein.'

III. Exemption 4 of the FOIA Is of Crucial Significance in the Protection of an Investigator's Ideas.

A. PREMATURE DISCLOSURE DIMINISHES AN INVESTIGATOR'S STOCK-IN-TRADE.

Traditionally, Federal granting agencies have recognized and protected a scientist's proprietary inter

7 Hamilton Laboratories v. Massengill, 111 F. 2d 584, 45 U.S.P.Q. 594 (6th Cir. 1940); Indiana General Corp. v. Lockheed Aircraft Corp., 249 F. Supp. 809, 148 U.S.P.Q. 312 (S.D. Cal. 1966); Gulliksen v. Halberg, 75 U.S.P.Q. 252 (Bd. App. 1937); Ex parte Hershberger, 96 U.S.P.Q. 54 (Bd. App. 1952).

est in his work. Applications submitted for funding and the research protocols they contained have been withheld from disclosure under the authority of Exemption 4. It was clearly recognized that making the preliminary research, research designs and protocols public at the time of application would violate the proprietary rights of applicants and greatly enhance the danger that the applicant's ideas (his stock-in-trade) will be appropriated by others. Another researcher might modify the original proposal, be awarded the grant and be the first to publish findings thereby not only causing loss of the research opportunity and grant to the initial applicant but also crediting the subsequent applicant with the idea.

These concerns of the research scientist are very real and highly important, and preoccupy them constantly. The essence of this concern was expressed by Dr. James Dewey Watson, Nobel laureate and Professor of Molecular Biology, Harvard University, when he candidly said that "we [scientists] all know too well that the types of jobs we eventually get are very much dependent upon how much we produce. There is little enthusiasm for those who always come in second." Professor Watson, in observing that "success in generating new ideas usually being more than the simple combination of native intelligence and a good measure of luck", pointed out that "(a)ll too often science resembles playing poker for very high stakes, where re

8 Watson, "The Sharing of Unpublished Information," second Frank Nelson Doubleday Lecture for 1973-74, at the National Museum of History and Technology, January 29, 1974, prepared remarks at 4.

vealing one's hands prematurely makes sense only when you have all the low cards.”

This policy of governmental protection of a scientist's ideas was challenged by the Washington Research Project, Inc. when denied access to research protocols funded by the National Institutes of Mental Health. The court concluded, in denying the use of the "trade secrets" exemption, that

10

"It is clear enough that a noncommercial scientist's research design is not literally a trade secret or item of commercial information, for it defies common sense to pretend that the scientist is engaged in trade or commerce. This is not to say that the scientist may not have a preference for or an interest in nondisclosure of this research design, only that it is not of trade or commercial interest... 11.

While the court allowed, in a footnote, that it might have reached a different result had there been a demonstration of the commercial character of the research projects at issue, amicus contends that this overly narrow reading of Exemption 4 focuses unduly on the nature and organizational locus of the submitter rath

10 Washington Research Project, Inc. v. Weinberger, 504 F.2d 238 (D.C. Cir. 1974), cert. denied, 421 U.S. 963 (1975).

11 504 F.2d at 241. The Court, in rejecting the "stock-in-trade" contention, did not take cognizance of the very extensive activities of many colleges and universities in licensing their inventions for commercial development. For example, the [University] of Wisconsin Alumni Research Foundation has, over a 51 year period, licensed inventions resulting in nearly $2 billion in sales and the return of substantial royalties utilized for university research. Hearings on the Business Record Exemption of the Freedom of Information Act before a Subcommittee of the House Committee on Government Operations, 95th Cong., 1st Sess. (1977), at 321.

er than the character of the information and the interests at stake. Certainly an argument can be made that protection, under law, of the intellectual property of investigators employed at universities and other nonprofit institutions ought to be equal to that protection accorded commercial firms. If Exemption 4 were considered to cover the information protectable under 18 U.S.C. § 1905, it seems clear that universities and nonprofit organizations would as a minimum occupy a position equal to commercial concerns under FOIA and FACA, since the protection anticipated by 18 U.S.C. § 1905 clearly extends to non-commercial organizations as well as to commercial enterprises. Further, such an approach would assure more predictable protection because 18 U.S.C. § 1905 contains a definitive identification of proprietary information and because Government officials would carefully adhere to this definition due to the penalties prescribed.

In the view of Representative John E. Moss, known as the "Father of FOIA," it was the Congressional intent that there be a close identification of 18 U.S.C. § 1905 and Exemption 4. In a summary of a November 10, 1975, meeting on FOIA with Representative Barry Goldwater, Jr.,:

"Mr. Moss indicated that, as an original author of the Freedom of Information Act, it was his intent and understanding that exemption (b) (4) would authorize the withholding from disclosure under that Act of all 'confidential information' protected by 18 U.S.C. 1905 in the criminal code. He further indicated that 18 U.S.C. 1905 was not intended as the authority to withhold such information under the Freedom of Information Act, but rather it was to be the test for what information was authorized to be withheld under the authority in exemp