Key Takeaways

  • An invention disclosure formally records a new invention and establishes its timeline, description, and potential for protection.
  • The invention disclosure process ensures inventors secure intellectual property rights and comply with institutional or federal policies.
  • Effective disclosures include detailed technical descriptions, diagrams, and identification of inventors and funding sources.
  • Common challenges include incomplete disclosures, lack of training, and timing errors before public disclosure.
  • Using online disclosure portals and maintaining communication with IP offices streamline the process and reduce risk.
  • Continuous updates to invention disclosures keep information accurate as research evolves.

What Is an Invention Disclosure?

An invention disclosure is the completion of a form that represents the first recording of the invention and establishes the date and scope.

Invention disclosures should include a comprehensive description of something novel and nonobvious explained in a way that allows anyone of ordinary skill in that particular field or industry to reproduce the invention on their own.

Invention disclosure documents have been used to defeat challenges to dates of invention, inventorship, invention scope, and prior art. If you improperly write your invention disclosure, it can result in a complete loss of your patent rights down the road. 

Importance and Purpose of Invention Disclosures

An invention disclosure serves as the bridge between the creative and legal phases of innovation. It documents the conception of an invention, describing its structure, functionality, and the problems it solves. A well-prepared invention disclosure helps determine whether the idea has commercial potential and qualifies for patent protection. It also establishes a clear record of inventorship and invention dates, which can defend against future ownership or prior art disputes.

In organizations, invention disclosures ensure compliance with internal policies and the Bayh-Dole Act, which mandates that federally funded research inventions be disclosed to protect ownership rights. Failure to disclose properly could result in the government claiming ownership of the invention.

What to Include in an Invention Disclosure

Invention disclosures should include: 

  • The title of the invention
  • The inventor's name, address, and phone number
  • When and how you thought of the invention
  • Date of the actual reduction to practice (this may be the same as the date of invention)
  • Date of public disclosure of the invention
  • A description of the invention which should include:
    • What makes it novel, useful, and better than any prior art
    • The purpose of the invention (what will it be used for?)
    • Drawings, sketches, or photos of the invention with all the parts labeled
    • How the invention is used
    • What features of the invention are different from prior art and how do they offer better results?
    • The advantages of this invention over other prior art
  • Any results you have from testing the invention
  • A set of keywords to help the patent attorney find the right classification for the patent
  • Research funding sources if there were any
  • References to related patent searches done by the inventor
  • A list of potential competitors
  • Witnesses who are scientifically competent and understand the details of the invention
  • Signatures of all inventors involved
  • An electronic receipt of the filed invention disclosure form

Steps in the Invention Disclosure Process

While the format may differ across institutions, most invention disclosure processes follow similar stages:

  1. Pre-Disclosure Consultation: If you are unsure whether an idea qualifies as an invention, reach out to your organization’s intellectual property or licensing team for guidance. Many universities provide pre-disclosure consultation requests to assess patent potential.
  2. Filing the Invention Disclosure: Submissions typically occur via secure online platforms. For instance, research institutions often use proprietary systems like Sophia to submit disclosures securely using institutional credentials.
  3. Provide Key Information: Include inventor names, funding sources, detailed invention abstracts, and draft manuscripts describing the novel aspects.
  4. Review by Licensing or IP Office: After submission, the disclosure is assigned to a licensing professional who reviews the invention’s commercial potential and determines whether it warrants patent filing.
  5. Follow-Up Meeting: The licensing team typically schedules a meeting with the inventor to clarify the invention’s novelty, potential applications, and possible next steps for protection.

How to Prepare Your Staff For Invention Disclosures

  • Educate inventors before they disclose

If you have a business where people are inventing, researching, or creating new products that may eventually require a patent, you should be sure to educate your staff on the invention disclosure process from the beginning. You should have a program that explains the policies, practices, and practical understanding of the patent process. The program is not a one-off explanation but a continuous education process.

  • Duty to disclose

Make sure that all of your employees are aware of and follow the policy related to duty to disclose and invention. Most companies have a policy that says employees need to disclose all inventions that they make during the course of their employment with that company.

  • Support your inventors

Inventors need to feel confident that their inventions are going to be thoroughly evaluated for their patentability and commercialization potential. You do not want to alienate your inventors by treating them as unimportant. Be sure that you give careful attention to each invention disclosure, no matter what the content.

The Intellectual Property (IP) official at your company needs to be the expert on all IP policies and practices. They then need to explain these policies to each inventor. 

  • Understand the inventor's timing of public disclosures

A common complication of invention disclosures is a publication or pending publication. If a publication is about to happen, you need to file a provisional patent application to avoid loss of patent rights. 

It is important that you completely understand the nature and content of the intended publication so that you can figure out whether it will contain a disclosure of the invention. It's also vital to know when the invention will be disclosed. You can do this by questioning each inventor to find out when a publication or abstract might happen.

  • Inventorship versus ownership

Disclosure of an invention means that the invention has been described in complete detail. Assignment means that the ownership and legal title to the invention have been given to another party.

Companies generally combine the duty to disclose and the assignment of inventions on one form that is then signed by any new employees when they first report for work. 

  • When an invention is co-owned

Projects between two separate companies or organizations are a common way to collaborate on ideas and inventions. These projects should be clearly described in a contract, grant, or inter-institutional agreement. The document should address co-inventorship and co-ownership of any intellectual propertyi developed during the term of the project.

Never assume that ownership will be shared without expressing it in writing. If something ish invented by co-inventors from two different companies and there was no contractual agreement, then a decision has to be made about how the invention will be disclosed.

Common Challenges in the Invention Disclosure Process

Inventors and organizations often face several obstacles during the invention disclosure process:

  • Incomplete Documentation: Many inventors provide high-level overviews instead of detailed technical descriptions, leading to “shallow disclosures” that omit crucial data for patent evaluation.
  • Unclear Inventorship: Confusion about contributors can delay the process. Always identify every individual who materially contributed to the invention.
  • Timing Issues: Disclosing too late—especially after a public presentation or publication—can jeopardize patent rights.
  • Limited Staff Awareness: Employees may not understand their duty to disclose or may hesitate to file if unsure about the invention’s patentability. Regular training and policy reminders can mitigate this.
  • Coordination Delays: Communication gaps between inventors and IP teams can slow review and evaluation. Continuous dialogue ensures timely action and builds inventor confidence in the process.

When to Disclose an Invention

You should disclose an invention as soon as it is deemed an invention. Even if a patent application never gets filed, an invention disclosure can often offer the invention some protection against other patent applications. This is particularly helpful in the U.S. where first-to-invent takes precedence over first-to-file.

Keeping Invention Disclosure Forms Updated

Usually, when an invention disclosure is submitted, it represents continuing research. This means that it might not meet the standards of patentability or commercialization potential to call for a patent filing. If research continues and the invention changes in any way, you need to make sure that you complete and updated invention disclosure form; otherwise you risk your first form becoming obsolete. If the original disclosure no longer represents the current state of the invention, there is no protection. 

If the second invention disclosure has the best method of practicing the invention, then the date of invention will change to become that of the second invention disclosure form and not the first.

Best Practices for Effective Invention Disclosures

To ensure invention disclosures are complete and actionable, adopt the following best practices:

  • Document Early and Thoroughly: Capture the concept as soon as it’s developed enough to describe and reproduce.
  • Use Clear Technical Language: Avoid jargon or marketing-style descriptions; focus on structure, operation, and novelty.
  • Attach Supporting Materials: Include diagrams, flowcharts, test data, and photos that illustrate how the invention works.
  • Identify All Funding Sources: Transparency about financial or institutional support is essential for compliance and ownership determination.
  • Keep it Confidential: Submit disclosures only through authorized channels and mark all materials as confidential to prevent public disclosure issues.
  • Update as Research Progresses: Treat the disclosure as a living document—update it whenever new variations or improvements arise.

Where to Submit an Invention Disclosure

If an inventor is working for a company and has signed a duty to disclose, then the invention disclosure needs to be submitted where the employer's policy says to. You used to be able to submit an invention disclosure to the U.S. Patent and Trademark Office (USPTO). They had a program that allowed investors to submit invention disclosures directly to them. The USPTO decided that this program was no longer needed. Many inventors believed that filing an invention disclosure gave them the legal protection of a patent pending status.

If you are an individual investor, you can now simply file a provisional patent application instead of an invention disclosure, which actually gives your invention a patent pending status.

Institutional and Federal Compliance Considerations

Invention disclosures are not only about patent protection but also about fulfilling institutional and federal requirements. Under the Bayh-Dole Act, inventions developed with federal funding must be disclosed within 90 days of development or before any public use. Noncompliance could allow the federal government to claim ownership.

Organizations typically provide digital submission platforms for compliance, ensuring that inventors can efficiently file, track, and manage disclosures. This helps both inventors and research institutions protect their rights and ensure adherence to reporting obligations.

Confidentiality of Invention Disclosures

All invention disclosures should be submitted confidentially to avoid any potential undesired publication of the invention before you file the patent application. When the disclosure is made by an employee to another employee, it should be clearly understood that the disclosure is confidential.

In very large companies and organizations, the presumption of confidentiality might not exist. This means that if the disclosure is challenged by an outside party, it may be deemed a publication. To avoid this happening, it is always important to verify confidentiality before disclosing any information.

Inventor's Certificate

An inventor's certificate can sometimes be filed instead of a patent application and is similar to an invention disclosure form. The certificate includes a detailed description of the invention and a lot of the same components as a patent application.

Unlike an invention disclosure form, an inventor's certificate is part of a legal process that publicly recognizes the inventor for a particular invention on a specific date.

An inventor's certificate is not a patent and doesn't offer any of the intellectual property protection provided by a patent. Most countries use the certificate as a monetary award to the inventor when they don't plan on patenting the invention.

Sample Invention Disclosure Form

Name of Inventor(s):

Address:

Telephone:

Fax:

E-mail:

Name of Invention:

Brief Description:

  • Give a short explanation of the invention.

Details of the Invention:

  • What parts or steps make the invention?
  • What does each step or part contribute to the invention?
  • Which parts are new to this invention and which are old?
  • How do the parts interact to make the invention work?
  • For each part, explain if it is essential to the invention.
  • Use labeled sketches if possible.

Alternatives:

Consider the alternative ways of building or operating your invention. Explain them here.

  • Discuss the structural alternatives such as ways the parts could be changed, substituted, or left out.
  • Can the invention be used for something other than what you created it for?

Limitations: 

  • When will the invention not work?
  • Are there any ranges of size, weight, or pressure that prevent the invention from working properly?
  • Do certain parts need to be made of specific substances?

Frequently Asked Questions

  1. What is the purpose of filing an invention disclosure?
    It documents the invention’s creation, protecting inventorship rights and enabling organizations to assess patentability and commercialization potential.
  2. Who reviews my invention disclosure?
    Typically, the organization’s licensing or IP office reviews the disclosure to determine whether a patent application or other protection is warranted.
  3. Can I update my invention disclosure after submission?
    Yes. If the invention evolves through ongoing research, submit an updated disclosure to ensure all new data and improvements are captured.
  4. What happens after I file an invention disclosure?
    After filing, a licensing team member or patent officer will contact you to discuss potential patent filing or commercialization paths.
  5. Does public presentation affect invention disclosure?
    Yes. Publicly disclosing your invention (through conferences, journals, or online) before filing can jeopardize patent rights, especially outside the U.S.

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