Disclosure FAQ

An invention disclosure is Northwestern University's record of an invention, the inventors involved, sponsorships and other related information. You may be required to disclose your invention through Northwestern's University Patent and Invention Policy.

Submitting an invention disclosure to the INVO is the first step in the disclosure process that could potentially result in a patent from the United States Patent and Trademark Office (USPTO). Submitting an invention disclosure to our office does not automatically mean your invention will be filed or patented.

Discussing Your Invention and Public Disclosure

INVO welcomes faculty to frequently communicate with their respective Invention Managers (IMs) regarding their technologies. IMs can offer advice on timing of disclosing, patentability and possible commercialization paths.

However, if you wish to talk about your invention with others outside of INVO, our office can help get a confidentiality disclosure agreement (also known as a CDA or NDA) in place to protect the technologies at hand. Be aware that you cannot sign a CDA on behalf of the University. Only authorized individuals can do so. If the agreement is breeched, you would be putting yourself at risk.

Note that invention disclosure is not the same as a "public disclosure." Inventions are considered publicly disclosed if they are described in a printed publication or oral disclosures, are used by or are made available to the public, or if they are for sale. Read more about public disclosure.

To best protect intellectual property, it is highly recommended that inventions are filed with the USPTO before they are publicly shared, as patent protection may otherwise be limited. INVO recommends submitting your invention disclosure 3-4 weeks prior to your public disclosure.

Plan to submit your disclosure 3-4 weeks prior to a public disclosure of your invention so that INVO can protect it accordingly.  Otherwise, you may be limited in the type of patent protection that may be acquired.

A public disclosure can include a description in a printed publication (including email correspondence, grant proposals, posters, abstracts and oral disclosures) as well as the sale, use or availability of the invention to the public. See a full overview of public disclosures.

Once INVO receives an invention disclosure, it is sent to the correct invention manager. Within 2-3 days of your disclosure, you will receive an email with an assigned NU reference number. Use this number when communicating with INVO about your invention. If additional information is required, you will hear from INVO staff within two to three weeks. Based on its due diligence, INVO will decide whether to file a provisional patent application within 60 days. INVO may also identify additional data in order to increase the chance of issuance. See details on the entire disclosure process.

A disclosure form is a document used to formally record an invention. It provides essential details that help an Intellectual Property (IP) team understand and protect your innovation.

• Invention Title: A clear and concise name for your invention.
• Inventors: Enter all inventors' names, as well as the inventors' current school and department affiliation. 
  Not to be confused with authorship, inventorship applies to everyone who contributed to the conception of an idea. See What is Inventorship? for a full definition of inventorship and to understand why identifying all inventors is critical.
• Sources of funds: List all funding sources and grant numbers, which must be accurate. Include subcontract information if applicable.
• Marketing abstract: Describe your invention, as well as its relevance, applications and advantages in a less technical manner. 
• Description of invention: Provide a technical description that will be used by the Intellectual Property team and outside counsel to understand what makes your invention distinct from other inventions.
• Public disclosures: List all disclosures (including journal articles, conference abstracts, oral and poster presentations, disclosures to industry and grant proposals) and their dates.
• Discovery information: Provide details of your discovery, including when, where and how it was conceived and documented.
• Prior art: List any other inventions that are similar to yours. This will help our team differentiate yours from others in your field. 
• Commercialization insights: Describe the problem or unmet need that your invention solves or addresses, as well as potential licenses. This will help develop a commercialization plan for the technology.
• Inventor information: Provide complete information on each inventor, including address and phone numbers, citizenship and employee ID number. Leaving these fields incomplete will delay form processing.

The completed and signed form (electronic signatures are accepted) should be submitted through the portal. If you experience any issues completing the form, contact invodisclosure@northwestern.edu. 

Patent law places a fairly low threshold on what is considered a public disclosure. Although you can disclose some information about an invention (you can describe an invention without giving details), almost any disclosure without limitation or obligation of secrecy may constitute a public disclosure.

The disclosures that will ultimately act as a bar to patentability must be "enabling"--that is, it must give enough information to someone "of ordinary skill in the art" to actually duplicate the invention. An invention is considered to be publicly disclosed when it falls into one of these four broad categories:

1. It is Described in a Printed Publication

   Printed publications include commonly associated items such as book chapters, journal articles, and theses. But printed publications also include:
   • Email Correspondence: Providing information to individuals outside Northwestern University by email, letters or other correspondence without indicating that the information being provided is confidential could also constitute disclosure.
   • Grant Proposals: Grant proposals to federal agencies are deemed publications as they are accessible under Freedom of Information Laws, but you can take active steps to ensure that information you provide under grant proposals is maintained in confidence when necessary. The first page of the proposal should carry the following notice: “Confidential Information--Pages __ to __ of THIS PROPOSAL contain potentially patentable information” List the pages containing the confidential information and conspicuously write “CONFIDENTIAL” on each page that contains the confidential information.
   • Posters, Abstracts and Proceedings
   • Oral Disclosures: Oral presentations are a gray area in terms of whether they constitute disclosure or not. If at a formal talk, you distribute a copy of your presentation in which your invention is disclosed, it is clearly a disclosure. However, even if handouts are not provided but someone in the audience takes detailed notes that describe the invention, it would also constitute disclosure. For these reasons you need to carefully plan your oral presentations so that you do not inadvertently disclose your invention. Thus conference presentations, departmental seminars, or thesis defense all present opportunities for public disclosure.

2. It is in Public Use

   Distribution of research materials and prototypes that embody the invention, may constitute disclosure under certain conditions. If the materials are provided without any restriction on use or further distribution it may be considered to be made available to the public. If they are clearly provided only for testing and/or evaluation or for research purposes under written agreements clearly specifying the same, it would not be considered disclosure.

3. It is on Sale

   A sale or an offer to sell a research material or prototype also constitutes disclosure and could establish a bar date for patent purposes.

4. It is Otherwise Available to the Public

   This is a new provision implemented under the American Invents Act on March 16, 2013. As this is a new statutory provision, it is unclear exactly how it will be implemented in practice. This provision may therefore expand the list of public disclosures in yet unforeseen ways.

Yes, inventions can be discussed under a confidentiality agreement. Confidentiality Disclosure Agreement (CDA) forms are available online. Please contact INVO for more information and guidance.

No, you can preserve patent rights in all countries by filing one application in a country and then appropriately claiming priority to that application.

It is possible to correct inventorship with the U.S. Patent and Trademark Office. INVO and outside patent counsel will work with you to help determine if a correction is needed to either add or remove inventors in accordance with U.S. patent law. For example, during prosecution of a patent application, the claims filed in the original patent application may change or some claims may be removed and/or new claims may be added. Therefore, an assessment of inventorship with regard to claims ultimately granted by the patent office is also important.

Inventorship should not be confused with authorship on a scientific publication. Almost anyone involved with a project could be identified as an author; however, not everyone involved in a project can or should be named as an inventor. Inventorship is determined by law, whereas authorship for a manuscript may vary, for example, based on academic discipline, lab group, or even institution.

As in all cases, the legal definition of inventorship applies, and the answer to this question depends on the facts related to the project. An invention may be co-invented by one or more faculty members and students if they collaborate and “conceive of an invention” together, or a faculty member alone or a student alone may be deemed a sole inventor.

For example, if a faculty member has conceived of general concepts related to an invention before a student becomes involved in working on a project, and that student does not contribute directly to the invention as it is being claimed in a patent application, then the faculty may be a sole inventor. On the other hand, if a student takes a general idea and conceives of the essential elements necessary to make the invention work beyond the general idea of the invention, the student might be considered an inventor.

Not necessarily. If an invention had already been conceived of by a faculty or staff member and that invention is used by the class, inventorship depends on what each individual has contributed to the conception of that invention.

No. Inventors are not necessarily owners of a patent. Ownership is determined by what rights others may have to the invention. At Northwestern, ownership of inventions and discoveries is determined by the University’s Patent and Invention Policy. For more information, please see the Northwestern University Patent and Invention Policy.