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