State universities will rarely, if ever, agree to abstain from publication or otherwise grant prepublication rights that allow the sponsor to withhold results from publication. This position is mandated by both Federal law and State university mission. State universities will, however, typically grant sponsors prepublication review rights to (a) determine if publication will disclose sponsor proprietary information; and (b) preserve patent rights. The following identifies Federal law and State university bases for restricting prepublication rights and provides a negotiable default prepublication review provision.
Federal Law: Export Control
Prepublication rights directly affect whether State university research is subject to various Export Control Laws
. Export Control Laws include the Export Administration Regulations
(“EAR”), which implement the Export Administration Act, and the International Traffic in Arms Regulations
(“ITAR”), which implement provisions of the Arms Export Control Act. The following discussion focuses on the EAR for two reasons. First, with respect to publication rights, the EAR and ITAR include similar requirements. Second, the EAR is more broadly applicable.
The EAR prohibits numerous exportation activities without license or authorization. See id.
at 15 C.F.R. § 736 et. seq.
Importantly, exportation under the EAR includes the “release of technology or source code subject to the EAR to a foreign national.” Id
. at § 734.2(b)(2)(i). Thus, a State university potentially engages in exportation subject to the EAR if that university provides technology or source code to a foreign graduate student. See id
The EAR, however, provides a safe harbor to State universities. Information resulting from “fundamental research” is not
subject to the EAR (“Fundamental Research Exclusion”). See id
. at § 734.2(a)(1). In defining “fundamental research,” the EAR focuses on publication and prepublication rights. First, fundamental research is defined as “basic and applied research in science and engineering, where the resulting information is ordinarily published and shared broadly within the scientific community
. at § 734.8(a) (emphasis added).1
Industry prepublication review affects whether the information is “ordinarily published and shared broadly within the scientific community” and thus fundamental research. See id.
§ 734.8(b)(2)-(6). Generally, prepublication review rights will cause the research to fall outside of the Fundamental Research Exclusion except in the limited situations where the prepublication review is to ensure that publication will not (1) advertently divulge proprietary information that the sponsor has furnished to the researchers; and/or (2) compromise patent rights. See id
. Any other prepublication review rights will likely cause the research to fall outside of the “fundamental research” definition and thus potentially subject that research to the EAR.2
Accordingly, in order to qualify for the Fundamental Research Exclusion, State universities will rarely grant sponsors prepublication review rights beyond those permitted by the EAR. Private universities will likely opt for the same approach as the Fundamental Research Exclusion is not limited to State universities, but rather applies to “any accredited institution of higher education located in the United States.” Id
. at § 734.8(b)(1).
The EAR are available online at Export Administration Regulations
Please note the Questions D(7) through D(10) in Supplement No. 1 to part 734.
State University Mission
A core mission of State universities is creation and dissemination of knowledge. Fundamental to this mission is the publication and disclosure of research results. State universities, as tax-exempt organizations, perform research that is in the public interest and that should lead to discoveries that are disseminated to and for the benefit of the public.
Another core mission of State universities is to educate its students. As part of this process, students are often required to draft and publish papers disclosing the results of thesis or other research. Excessive publication restrictions can affect the ability of those students to complete these degree requirements and graduate in a timely fashion.
Restricting publication is contrary to State university core missions.
Default Prepublication Provision
The Ohio Attorney General, Ohio Board of Regents and various Ohio technology transfer officers developed a template Sponsored Research Agreement
(“SRA”). In that SRA the default publication provision (5.01) requires notice to the Sponsor, a 30 day period to review for patent concerns (“notice period”) and then an additional 60 day delay in submission to allow for the Sponsor to adequately address those patent concerns (“delay period”). The template SRA therefore provides the Sponsor 90 days to draft and file a patent application that preserves the novelty of any invention disclosed in the publication and/or to negotiate with the authors alternative language that does not disclose the Sponsor’s IP.
It is important to note that these are default terms. Under some special circumstances a State university may negotiate modest increases in the duration of either or both of the notice and delay periods.
1 The ITAR define fundamental research using the same language. See 22. C.F.R. § 120.11(a)(8).
2 The ITAR provides that University research is not fundamental research if “the University or its researchers accept other restrictions on publication of scientific and technical information resulting from the project or activity. . . .” 22 C.F.R. § 120.11(a)(8)(i). Unlike the EAR, the ITAR does not explicitly allow prepublication review to assess disclosure of sponsor proprietary information or preserve patent rights. Thus, an agreement within the scope of the ITAR may have narrower prepublication rights than an agreement only within the scope of the EAR.