Common Patent Terms

While the Technology Commercialization Office (TCO) can help you through the patenting process, it is important that you understand the key terms you may hear throughout. 

Conception of an invention

This is required to file a patent application. Conception refers to ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention’1 or a point where you can teach someone to make an invention. Because it may be difficult to pinpoint when conception of your invention occurs, contact TCO early in the invention process.

Public disclosure

Public disclosure is telling people about your idea and can be done through websites, blogs, conference presentations, publications or sale of the invention. You can also inadvertently disclose if you discuss your invention with anyone outside of the GW community without a non-disclosure agreement. Generally, public disclosure significantly reduces patent protection for your invention. It is imperative that you contact TCO early on when you conceptualize an invention, especially if you have upcoming publications or presentations.

Invention disclosure to TCO

If you conceptualize an invention or you anticipate developing an invention, you should disclose it to TCO to assess it for patentability and commercialization potential. Your disclosure to TCO must be complete and should be updated periodically as milestones or other improvements are achieved. For details on what you need to update, use our Disclosures page.

Disclosure to the patent office

You must make a full disclosure of your invention to the U.S. Patent and Trademark Office in exchange for legal protection of it. The disclosure should be sufficient enough to teach someone in the field (e.g. an engineer, a pharmaceutical researcher, a chemist) to make and use your invention. Everyone involved in the patent process (i.e. inventors, TCO and patent lawyers) are required by law to disclose all references (i.e., publications, published patents) that may be relevant to patentability of the invention to the patent office. Failure to make a complete disclosure can result in invalidation of the patent.

First-to-file system

The United States, much like the rest of the world, now grants patents under the "first-to-file" system. Under the system, an inventor who files a patent application first is granted a patent, regardless of the date of actual invention. This means that you should consider filing a patent application expeditiously and is another reason to contact TCO early in your invention process.

Office Actions

For most patent applications, a patent examiner will challenge patentability of your invention through a process called an office action. An inventor’s input is invaluable in overcoming these challenges by the patent examiner. Expect to hear from TCO regarding an office action approximately one to two years after filing your non-provisional patent application. In order for us to promptly follow up on office actions, it is important that you update your contact information with TCO, especially if your address or phone number changes.

1Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930)