Research Administration Office

University of California

Memo Operating Guidance

No. 92-18

Supplement No. 1

September 3, 1992

Subject: Public Accessibility to Proposal Data under the Freedom of Information Act: An Update

In Contract and Grant Memo 92-18 (July 17, 1992) we gave you some background information on a court case (known as Cetus) related to the question of public accessibility to proposal data under the Freedom of Information Act. We also notified you that we had written letters to the FOIA officers of the major funding agencies, expressing our concerns and outlining our understanding of the agency's current FOIA procedures.

We have received positive responses from Health and Human Services, NASA, and NSF. All of these agencies confirmed our understanding that submitters of proposals would be alerted by the agency of a FOIA request before any information is released. Copies of these agency responses are enclosed [the regulations attached to the letter from HHS have not been copied]. We heard from the Department of Defense, but it was only to say that they had sent our letter on to DoD Office of General Counsel for review. No other agencies have yet been heard from.

Based on the letters received so far, we can say that the guidance offered in Contract and Grant Memo 92-18 is still valid.

Refer: William Sellers (510) 987-9847

Subject Index: 17

Organization Index: F-350, F-650, F-711

David F. Mears

Director

Research Administration Office

Enclosures

Carl Wootten/OTT

Kate Phillips/COGR (w/copy of Memo 92-18)

Linden Clausen/ONR


OFFICE OF THE GENERAL. COUNSEL

NATIONAL SCIENCE FOUNDATION

WASHINGTON, D.C. 20550

July 30, 1992

David F. Mears, Director

Research Administration Office

University of California

300 Lakeside Drive

Oakland, CA 94612-3550

Subject: NSF funding as a divestive publication

Dear Mr. Mears:

This responds to your letter of July 2, 1992. We are aware of the case of E.I. du Pont de Nemours v. Cetus Corp., N.D. CA, December 11, 1990. That case held that a research proposal funded by the National Science Foundation was a divestive publication because of its availability under the Freedom of Information Act and NSF cataloging and disclosure procedures. However, the case involved a proposal submitted to the Foundation before we amended our FOIA regulation (published as part 612 of title 45 of the Code of Federal Regulations) in June 1984. (We since further amended these regulations to incorporate the formal procedures called for in Executive Order 12600.) Now a funded proposal will be released only after the submitting organization is notified and allowed to identify portions that it wishes withheld (Sec. 612.6 and .7(c)) and the statutory FOIA exemption contained in section 205 of the "Bayh-Dole Act" (35 U.S.C. Ch.18) is specifically mentioned (Sec. 612.8(a)(3)). NSF believes that those changes sufficiently restrict and record access to funded proposals that the holding of the California case would not apply to proposals funded after June 1984.

The best way to protect the patentability of your institution's inventions would be to identify them before proposals describing them are submitted to us and then either file patent applications or at least segregate and mark relevant portions of the proposals as proprietary. See discussion under the heading "Proposals as Public Record" on page 15 of the Grants for Research and

Education in Science and Engineering, NSF 90-77, August 1990, and 45 CFR 612.6(c).

Assistant General Counsel


DEPARTMENT OF HEALTH & HUMAN SERVICES

Mr. David F. Mears, Director

Research Administration Office

Office of the President

University of California

300 Lakeside Drive

Oakland, CA 94612-3550

Washington, D.C. 20201

RECEIVED

AUG l 7 1992

Dear Mr. Mears:

RESEARCH ADMINISTRATION

In your letter of July 2, 1992 you stated that as a result of the U.S. District Court decision in E.I. du Pont de Nemours & Co. v. Cetus Corporation, the University is Concerned that there may be a greater need to protect its intellectual property rights under Federally-funded research projects.

I can address your-concerns only from the perspective of the Freedom of Information Act (FOIA) and the Department's current FOIA regulation, which is enclosed. Under the Department's previous FOIA regulation (replaced in 1988 and no longer in effect - and to which the court alluded) portions of funded or unfunded grant applications were generally available to the public unless exempt from disclosure by the FOIA and by the regulation. Thus, confidential portions of grant application were withheld, and continue to be withheld under the Department's current regulation.

While the current regulation no longer refers specifically to grant applications, it clearly provides for the withholding of confidential commercial information regardless of the type of record that contains such information. (Please see 45 CFR 5.65(b) of the enclosed regulation.)

The Department's regulation also allows the submitter of the information to designate all or part of that information as exempt under Exemption 4 of the FOIA. Such designations alert us to the possibly exempt character of the designated material. The Department also follows the requirements contained in Executive Order 12600 (enclosed) which concerns pre-disclosure notification to the submitter.

(Carl C. Coleman, Director FOIA/Privacy Acts Division Office of Public Affairs

Enclosures

NASA

National Aeronautics and Space Administration

Washington, D.C. 20546

PSN


August 13, 1992

Mr. David F. Mears

Director, Research Administration Office

University of California

Office of the President

300 Lakeside Drive

Oakland, CA 94612-3550

Dear Mr. Mears:

This is in reply to your letter dated July 2, 1992, in which you raise a general issue concerning NASA's implementation of the Freedom of Information Act (FOIA). Specifically, citing E.I. du Pont de Nemours & Co. v. Cetus Corp., 19 U.S.P.Q. 1174 (N.D.Cal. 1990), you express concern that disclosure of proposal material by NASA under the FOIA could affect the rights of the University to successfully pursue patent applications. You request assurance that in its implementation of the FOIA, NASA provide suitable protection for the intellectual property rights of contractors and grantees working under Government funded research projects.

Basically, your understanding of our procedure is accurate. When NASA receives requests under the FOIA for proposal data, pursuant to Executive Order 12600, we routinely contact the submitter of the data to elicit the submitter's views concerning releasability of the information. Those views are ordinarily controlling. In the event we believe data should be released over the objection

of the submitter, the submitter is provided a full opportunity to

challenge such a decision prior to disclosure of the data. The standard practice with regard to proposal data is to withhold this information under Exemption 4 of the FOIA unless the submitter consents to release or the Government has acquired rights to the data under the terms of the ensuing contract. Marking the confidential portions of technical proposals with an appropriate restrictive legend facilitates this result.

Technical reports covering work performed under contracts or grants are treated differently. As deliverable items, these reports represent products of Government funding and are considered to be in the public domain. However, if NASA is notified by the contractor or grantee that such a report discloses an invention, pursuant to 35 U.S.C. 205, NASA will withhold the document under Exemption 3 of the FOIA for a reasonable period of time to allow the submitter to file a patent application.

Hopefully, the preceding information is responsive to your inquiry.

Patricia M. Riep

Freedom of Information Act Officer

cc:

AC/Ms. Druyun