Final Invention/Patent Reporting
All University employees are responsible to disclose all intellectual property that could constitute inventions or copyrighted works to Technology Licensing through the invention disclosure process.
Invention disclosure is critically important for all projects, especially where any portion of the funding comes from the federal government, private foundation, or commercial sponsor. Federal law requires prompt disclosure and the University, investigators, and involved companies could lose very significant rights if disclosures are not promptly made.
Disclosures are to be filled out by inventors to inform Technology Licensing of the nature of a new invention. This disclosure should:
- Be filled out completely with as much detail as possible or processing can be delayed.
- Include all the information necessary to pursue patent protection and commercialization activities.
- List all sponsors of the research and federal agency(s) and grant number(s) if applicable.
- Include dates of any upcoming publications or other public disclosure describing the invention.
- Be signed by all inventors and include their contact information.
The disclosure process was designed to be intuitive and easy to use.
At the end of a project, most federal sponsors require a final invention statement. The statement requires that the University disclose either a positive or negative report, depending on whether there was a disclosure of a subject invention during the project. A subject invention is defined by the Code of Federal Regulations as "any invention of the contractor (grantee) conceived or first actually reduced to practice in the performance of work under the contract (grant)..."
All information reported on the sponsor forms is provided in collaboration with the PI, OSP and the Technology Licensing. Technology Licensing will provide institutional approval of the statement, if required by the sponsor.
Final invention processes and forms by sponsor:
DOD requires submission of Form DD882. The form is completed by the PI and sent to OSP, who will then send it to Technology Licensing. The PI will need to verify whether or not any inventions have been previously reported. Please include the project number, award number and PI associated with the closeout in the subject line as well as the body of the email.
If there are no invention disclosures to report, the PI will still need to complete a negative report and send it to OSP to coordinate with Technology Licensing for signature.
Any issues or contradictions between the PI's information and what Technology Licensing shows in the system will be resolved directly between Technology Licensing and the PI.
Technology Licensing will return the signed invention disclosure to the PI and OSP. The PI will need to submit the report via the method stated in the award terms and conditions. OSP will file the final invention disclosure as part of the close-out record.
DOE requires submission of a Patent Certification Form DOE F2050-11. The form is completed by the PI and sent to OSP, who will then send it to Technology Licensing. The PI will need to verify whether or not any inventions have been previously reported. Please include the project number, award number and PI associated with the closeout in the subject line as well as the body of the email.
If there are no invention disclosures to report, the PI will still need to complete a negative report and send it to OSP to coordinate with Technology Licensing for signature.
Any issues or contradictions between the PI's information and what Technology Licensing shows in the system will be resolved directly between Technology Licensing and the PI.
Technology Licensing will return the signed invention disclosure to the PI and OSP. The PI will need to submit the report via the method stated in the award terms and conditions. For instructions on reporting through FedConnect (which may or may not apply depending on your specific T&Cs) see DOE Reporting.
OSP will file the final invention disclosure as part of the close-out record.
National Aeronautics and Space Administration (NASA)
NASA requires submission of the NASA New Technology Summary Report Form through NASA's Technology Reporting System. If there are invention disclosures to report, the form is completed by the PI and sent to OSP, who will then send it to Technology Licensing. The PI will need to verify whether or not any inventions have been previously reported. Please include the project number, award number and PI associated with the closeout in the subject line as well as the body of the email.
Any issues or contradictions between the PI's information and what Technology Licensing shows in the system will be resolved directly between Technology Licensing and the PI.
Technology Licensing can then provide the institutional approval of the Final Invention Statement in NASA's Technology Reporting System.
National Institutes of Health (NIH)
NIH requires submission of Form HHS568 via eRA Commons. The PI logs into eRA Commons and clicks the Status tab at the top of the screen. The PI selects the "Requires Closeout" hyperlink in the Action column on the award. When the closeout status screen appears, the PI clicks the Process Final Invention Statement hyperlink.
Once the PI has completed the Final Invention Statement Form HHS568 electronically, he/she contacts OSP and OSP will coordinate closeout with Technology Licensing. The PI will need to verify whether or not any inventions have been previously reported. Please include the project number, award number and PI associated with the closeout in the subject line as well as the body of the email.
Any issues or contradictions between the PI's information and what Technology Licensing shows in the system will be resolved directly between Technology Licensing and the PI.
Technology Licensing can then provide the institutional approval of the Final Invention Statement in eRA Commons.
In some cases, the hyperlink to the closing NIH project is not available in eRA Commons. In that case, the PI should prepare an HHS568 Final Invention Statement and submit as an electronic attachment to OSP, if a positive invention statement. If there are no inventions to report, the PI must confirm and forward this confirmation to OSP.
National Science Foundation (NSF)
Per the PAPPG, NSF does not require either an Annual Utilization Report or a Final Invention Statement and Certification.
If you are the PI of an NSF sponsored project and need to make a subject invention disclosure, please use the disclosure portal to disclose the invention to Technology Licensing. Technology Licensing will review the disclosure and submit via iEdison, as necessary.
Office of Naval Research (ONR)
ONR is part of the DOD and requires submission of the DD Form 882 – Report of Inventions and Subcontracts. Under NASA awards, however, each research grantee, research contractor and research subcontractor is required to report new technology to the NASA Technology Utilization Office, using their online system.
When the DD882 includes a reported invention, Tech Licensing should also provide an additional invention-disclosure report which should be submitted with the DD882.
The form is completed by the PI and sent to OSP, who will then send it to Technology Licensing. The PI will need to verify whether or not any inventions have been previously reported. Please include the project number, award number and PI associated with the closeout in the subject line as well as the body of the email.
If there are no invention disclosures to report, the PI will still need to complete a negative report and send it to OSP to coordinate with Technology Licensing for signature.
Any issues or contradictions between the PI's information and what Technology Licensing shows in the system will be resolved directly between Technology Licensing and the PI.
Technology Licensing will return the signed invention disclosure, and invention disclosure where applicable, to the PI and OSP. The PI will need to submit the report (and disclosure) via the method stated in the award terms and conditions. For instructions on reporting through FedConnect (which may or may not apply depending on your specific T&Cs) see DOE Reporting.
OSP will file the final invention disclosure as part of the close-out record.
