Invention Reporting Flowchart

Originally created in 1995 to help our customers navigate the U.S. Federal invention reporting requirements, we have revamped and digitized it for 2019. This is only intended to be used as a general guide. Please read the notes in the legend. Enjoy!

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Disclose to Funding Agency within 60 days. Sooner if publication bar date is less than 60 days to preserve rights. Filing a patent ASAP may be necessary to preserve rights. Begin annual utilization reporting starting with the year title was elected. Evaluation by TTO If passes is or may be patentable/able to be commercialized test, proceed to further evaluation Do dates of conception or RTP fall within the funding period? N o Invention Reporting Flowchart S t a r t L E G E N D F undin g I n v en ti on Y e s Y e s No Within 2 years of Disclosure - Is title to be elected? Y e s Y e s A r e p r i o r i t y p a t e n t s t o be f i l e d ? Y e s No Y e s U . S . P R O V Y e s N o Y e s N o N o N o N o Y e s No Y e s Y e s Y e s Y e s U ti li z at ion   reportin g P a t en t App li c a tio n No 1 - I s o r m a y b e p a t e n t a bl e ? 2 - N o t p a t e n t a bl e , b u t n o t a bl e t o b e c om m e r c i a li ze d ? Y e s The Benchmark in Intellectual Property Management Software since 1992. Y e s Y e s Retain as biological material/research tool. Annual Utilization Requirements Y e s Retain as biological material/research tool. Annual Utilization Requirements N o This chart is made available to end user licensees of Inteum™ technology management software systems and other interested parties solely as a guide in estimating U.S. Federal invention reporting requirements which are defined in 37 CFR 401. This chart should in no way be used to definitively determine federal invention reporting requirements, many of which vary by agency. Users of this chart have sole responsibility and liability for determining their invention reporting requirements under the law and should consult with legal counsel and/or federal government representatives regarding the same. The following are not specifically covered in the chart and users should take special care in addressing these issues: CIP and divisional patent applications. PCT patent applications which designate the USA. Priority foreign patent applications from which derivative U.S. patent applications are based. Software and other special exceptions to typical federal invention reporting requirements. Any non-federal invention reporting requirements. The filing of U.S. provisional patent applications based upon previously-filed, regular U.S. patent applications. Restrictions imposed on certain inventions by secrecy orders of foreign filing licenses. Utilization (e.g., licensing) of inventions that are not yet patented or may not be patentable. Assignments of inventions or invention/technology management by or to third-party entities. Changes in federal invention reporting requirements, either currently pending or placed into effect in the future. Retain as biological material/research tool. Annual Utilization Requirements Best Practice* If this is the ONLY active patent in the family that is commercializable without IP protection. Best Practice If this is the ONLY active patent in the family that is commercializable without IP protection. No reporting required TTO can still pursue theinvention if desired. No. If not patentable or able to be commercialized, no reporting required. Notify inventors of TTO decision not to pursue the case. No. *May elect to retain as biological material/ research tool if not patentable, but potentially able to be commercialized. Yes, public disclosure has occured. Innovative Technology Management Initial TTO Review Has there been, or are there plans to publicly disclose the invention? (Publications/Abstract/Poster Session, etc.), More information and resources on iEdison reporting: eRA iEdison Home iEdison Invention Reporting Timeline iEdison FAQ and Resources 1995-2007 Inteum Company, LLC Unauthorized reproduction for the creation of derivative works thereon is expressly prohibited by law. Produed by Inteum Company, LLC. Within 60 days of receipt of disclosure by TTO Disclosure to funding agency 2 years from disclosure to funding agency extension period Election to retain title Begin annual utilization reporting starting with the year title was elected 2 years from disclosure to funding agency extension period Up to 2 years Obtain Extension With extension, up to 4 years from disclosure date to funding agency Disclosure to funding agency Is title to be elected? Notice to inventors Notice to inventors Notice to funding agency Notice to inventors Notice to funding agency Convert PROV to US/PCT Best Practice Report newly filed PROV to funding agency Report PROV filing to funding agency (Best practice—Submit proof of government support clause (GSC), Not required to submit confirmatory license) U.S. provisional (PROV), U.S. regular (Non-PROV) or international (PCT/Foreign) application? Are priority patent(s) to be filed? Within 12 months of PROV filing Within 12 months of PROV filing PCT Filing Best Practice If still potentially commercializable without IP protection. Convert PCT to US national phase 30 month deadline Convert PCT to foreign national entitly Provide funding agency notice of countries designated (If EPO, which countries for validation?) Notice to funding agency Notices to inventors Notices to inventors Notice to funding agency Notice to funding agency Notices to inventors Notice to funding agency Prosecution to be abandoned? Issuance of patent? Are patent maintenance fees to be paid? Utilization Reporting Varies by funding agency Office Action or Task Incorporate Government Support Clause in specification of the application Report new filing to sponsor -GSC required -confirmatory license required U.S. Non-PROV Prior to any statutory bar date Notice to funding agency Notices to inventors Are derivative international applications to be filed? Prosecution to be abandoned? Issuance of patent? Notice to funding agency Notices to inventors 1 year from electing the title + extension 1 year from electing the title File within 1 year of title election Obtain extension Is an extension to file priority patents needed? Unsure Notice to funding agency Notices to inventors Are maintenance fees to be paid? Notice to funding agency Notices to inventors Notices to inventors Notice to funding agency Varies by funding agency N o Notice to inventors Notice to funding agency Is an extension to elect title needed and possible (considering any upcoming bar dates)? No Unsure/Too Early Start End Ongoing Event Decision Point End End End End End End End End End End End End Disclosure to TTO

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