Who must disclose inventions and what must be disclosed?
Invention disclosure is critically important for all projects, especially where any portion of the funding comes from the federal government, private foundation, or commercial sponsor. Federal law requires prompt disclosure since TCNJ, investigators, or any involved companies could lose very significant rights if disclosures are not promptly made.
Disclosures are to be filled out by inventors to inform TCNJ of the nature of a new invention. This disclosure should:
- Be filled out completely with as much detail as possible or processing can be delayed.
- Include all the information necessary to pursue patent protection and commercialization activities.
- List all sponsors of the research and federal agency(s) and grant number(s) if applicable.
- Include dates of any upcoming publications or other public disclosure describing the invention.
- Be signed by all inventors and include their contact information.
Faculty, staff, and students are responsible for reporting all inventions resulting from work:
- that used any college funding (including federal funds, state funds, gift funds, etc.), or
- that was conducted on college premises, or
- that used university supplies or equipment.
The Invention Disclosure Report form may be completed and filed by any of the inventors. The person filing the invention disclosure form is responsible for providing complete and accurate information, as required on the form, and for distributing copies of the completed disclosure to all individuals identified on the form as inventors.
Computer software may be an invention (i.e. patentable) and covered under federal law related to rights to inventions conceived during federally funded grants and contracts (the Bayh-Dole Act). Additionally, computer software and other types of copyrightable materials may be subject to intellectual property rights set forth in agreements.
All Invention Disclosure Reports (IDR) are filed with OGSR. OGSR forwards the invention disclosure form to the Office of the General Counsel, which is responsible for determining the disposition of the intellectual property rights and for any required notifications.
How to disclose your invention
Inventions are disclosed by completing an Invention Disclosure Report form and submitting this form to OGSR.
Following receipt of the Invention Disclosure Report form someone from OGSR will contact the inventor(s) to schedule a disclosure meeting. If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact OGSR immediately.
Once OGSR processes a new disclosure, the TCNJ Office of the General Counsel will perform an equity review to determine who has ownership rights to the invention.
Disclose your invention to TCNJ prior to a public disclosure
If you are planning to present your research at a conference or invited talk, publish a paper, present a poster or otherwise publicly disclose your invention, contact OGSR prior to the disclosure to learn how to protect your patent rights. If you are unsure what constitutes a public disclosure or have already disclosed your invention, consult OGSR.
In the majority of countries in the world, public disclosure of your patentable research precludes you from obtaining patent protection. The U.S. is unique in that it offers a one-year grace period. Therefore, you have one year from the date of public disclosure during which to file a U.S. patent application. If you fail to file a U.S. patent application within this one-year period, all possibilities of obtaining a U.S. patent are lost.
Federal law requires prompt disclosure of an invention to TCNJ since TCNJ, investigators, or any involved companies could lose very significant rights if disclosures are not promptly made before any public disclosure is made (e.g., a publication; abstract; thesis; web-posting; poster presentation; oral presentation; awarded federal grant; or non-confidential conversation with persons outside of TCNJ that included essential details of the invention).
The above disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property.
Almost all federal grants and contracts are subject to the terms and conditions of the Bayh-Dole Act (37 CFR 401). Under these terms, TCNJ retains title to all inventions conceived or reduced to practice in the performance of the project (37 CFR 401.14(B)). The Federal government receives a non-exclusive license to use the invention for government purposes.
The TCNJ Office of General Counsel and OGSR are responsible for assisting the PI in fulfilling the patent provisions of their agreement. Please contact OGSR if there are any questions regarding the intellectual property obligations of the award.
All Subject Inventions (conceived or first actually reduced to practice in the performance of the agreement) must be reported through the iEdison system within two (2) months after the inventor discloses the invention to the college. Invention reporting is required regardless of whether patent protection is sought. Failure to comply with the terms of the agreement may result in a loss of rights in Subject Inventions, including, but not limited to, forfeiture of retained rights. Please contact us in OGSR early with any questions regarding invention disclosure.
Public Disclosure Can Affect Patentability
It is recommended that investigators and researchers disclose their ideas to TCNJ prior to any public disclosure.
What is Considered a Public Disclosure?
A public disclosure is any non-confidential communication of an idea or invention.
Public disclosures may include: conventional academic printed and online publications, abstracts, master’s theses, Ph.D. dissertations, open thesis defenses, presentations, poster sessions, department and campus seminars, information posted online and publicly available abstracts of funded grant proposals. Grant proposal abstracts should be high-level and tailored to prevent unwanted disclosure. Grant applications typically are not made public, although grant final reports can be available to the public and would be considered a public disclosure.
Public Disclosure Can Lead to Loss of Patent Rights
The U.S. transitioned from a “first-to-invent” to a “first-inventor-to-file” patent system with the passing of the America Invents Act. In the U.S., an inventor’s public disclosure of their own work made less than one year prior to their patent filing date will not count as prior art. This is referred to as a grace period for the inventor’s own disclosure. Caution: The time window between an inventor’s public disclosure and patent application filing date allows others to publish similar work or work that builds off your own work. These intervening publications may prevent or hinder patentability of your invention.
If your public disclosure was made more than one year before your patent filing date, it is considered prior art and may prevent you from obtaining a patent.
In most countries outside the U.S. there is no inventor grace period and any public disclosure prior to filing a patent application filing can prevent you from obtaining a patent.
The rules mentioned above apply to patents. Different rules apply to copyrights, biological materials and other intellectual property.
Disclosure of Final Invention Statement
At the end of a project, most federal sponsors require a final invention statement. The statement requires that the College disclose either a positive or negative report, depending on whether there was a disclosure of a subject invention during the project. A subject invention is defined by the Code of Federal Regulations as “any invention of the contractor (grantee) conceived or first actually reduced to practice in the performance of work under the contract (grant)…”
Final invention processes and forms by sponsor:
National Institutes of Health (NIH)
NIH requires submission of Form HHS568 via eRA Commons. The PI logs into eRA Commons and clicks the Status tab at the top of the screen. The PI selects the “Requires Closeout” hyperlink in the Action column on the award. When the closeout status screen appears, the PI clicks the Process Final Invention Statement hyperlink.
National Science Foundation (NSF)
Per the PAPPG, NSF does not require either an Annual Utilization Report or a Final Invention Statement and Certification.
If you are the PI of an NSF sponsored project and need to make a subject invention disclosure, please submit a disclosure form to OGSR. OGSR will review the disclosure and submit via iEdison, as necessary.
Department of Defense (DOD)
DOD requires submission of Form DD882.
If there are no invention disclosures to report, the PI will still need to complete a negative report.
Department of Energy (DOE)
DOE requires submission of a Patent Certification Form DOE F2050-11.
National Aeronautics and Space Administration (NASA)
NASA requires submission of the NASA New Technology Summary Report Form through NASA’s Technology Reporting System. If there are invention disclosures to report, the form is completed by the PI.