Disclosing an Invention
Who must disclose inventions and what must be disclosed?
Based on UW–Madison and UW System policy, faculty, staff, and students are responsible for reporting all inventions resulting from work:
- that took place while pursuing university duties, or
- that used ANY university funding (including federal funds, industrial funds, state funds, gift funds, etc.), or
- that was conducted on university 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. Before making any disposition of rights to copyrightable material produced under and as part of extramurally funded research the principal investigator should file an invention disclosure report with the Wisconsin Alumni Research Foundation (WARF) who will forward it to the Office of the Vice Chancellor for Research and Graduate Education for an equity determination.
All Invention Disclosure Reports (IDR) are filed with WARF. WARF forwards the invention disclosure form to the Office of the Vice Chancellor for Research and Graduate Education, 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 WARF. WARF cannot process an invention or consider it for patenting and licensing until they receive a completed IDR. All inventions made by UW–Madison faculty, staff and students must be disclosed to WARF regardless of the monies (federal, industrial, state, gift, etc.) that funded the research leading to the invention.
For a copy of the IDR and for information on how to fill out an IDR form, see Disclosing to WARF. The IDR form may be downloaded and submitted electronically through WARF’s secure email page, or printed and sent to WARF through the U.S. mail.
Following receipt of the Invention Disclosure Report form a WARF intellectual property manager 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 a WARF intellectual property manager in your area of scientific expertise immediately. Guidance on who to contact may be found at the WARF website.
Once WARF processes a new disclosure, the UW–Madison the Office of the Vice Chancellor for Research and Graduate Education will perform an equity review to determine who has ownership rights to the invention.
Disclose your invention to WARF 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 someone at WARF 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 a WARF Intellectual Property Manager.
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.
If you have already made a public disclosure of your invention but less than one year has passed since the date of the first disclosure, WARF should still be able to prepare a patent application on your work. This is especially true if you bring your invention to WARF at least three months ahead of the deadline for filing a U.S. application.
The above disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Call a WARF intellectual property manager if you have any questions.
Public Disclosure Can Affect Patentability
It is recommended that investigators and researchers disclose their ideas to WARF prior to any public disclosure.
What is Considered a Public Disclosure?
A public disclosure is any, non-confidential communication of an idea or invention. Contact one of WARF’s intellectual property managers with questions about your previous or planned public disclosures.
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. Call a WARF intellectual property manager if you have any questions.