Since 2013, the United States has been a “First to File” jurisdiction. Prior to 2013, the US patent law awarded patents to the first inventor, rather than the first inventor to file. Previous to this change, it was accepted practice that researchers/inventors maintain documentation of their development efforts. Documenting inventions however remains important.
Typically, documentation involved maintaining “laboratory notebooks”. The accepted practice was to record within these notebooks research and development activities where such activity was recorded by date, and the activity described and the experimental results. Each entry would be signed by the person performing the research and development activity. The laboratory notebooks were confidential documents and the neither the books nor the information was disclosed to third parties without an adequate confidentiality agreement.
The entries were required to be sufficiently detailed that a person skilled in the art could replicate the experimental activity. Again, it was critical to always be able to document when and who first made the invention. It was recommended best practice to have the lab notebook entries witnessed by two persons who understood the substance of the entries.
With the change in law, the filing date of the patent application became the critical event. Less emphasis may have begun to be placed on the daily recording of research activities.
A recent news article, however, reported activity of alleged theft of research work that resulted in a patent being awarded to a third party, thereby robbing the inventor (and the inventor’s university) from the benefit of the invention.
The news article reports of the invention of a drug and treatment that was licensed to a pharmaceutical company wherein the alleged false inventor would receive millions in royalties over the term of the patent. It is reported that the university has initiated litigation against a former research professor alleging that the professor falsely claimed inventorship, thereby robbing the university and the inventor/research graduate student from the benefit of the invention. Further, the former professor and his wife are alleged to have destroyed the researcher graduate student’s laboratory notebooks and other items that showed the student’s records of invention.
This event, regardless of accuracy, highlights the continued need for persons engaged in research and development activities to effectively document their inventive activities.
First, I want to reach back in time to a still very relevant quotation form Stephen Albainy-Jenei, creator of the blog Patent Baristas.
“I’ve said it before and I’ll say it again, if you do research you must keep meticulous notes of the inventive process. Laboratory notebooks often play an important role during the patent prosecution process and even after a patent has issued. A properly kept notebook is invaluable in cases in which another party claims a patent to be invalid or in interference cases in which two or more patents have been issued on the same invention and the true inventor must be ascertained”.
It remains important to maintain detailed records of the conception and reduction to practice of an invention.
- Use of a bound laboratory notebook (in contrast to a loose leaf notebook or three ring binder) is recommended.
- Entries into the notebook are to be complete and legible. Hand written entries should be in permanent ink.
- Each entry should be signed and dated.
- The entries should be witnessed.
- Entries should not be later removed or “whited out” but rather a single line drawn through the text.
- Pages should not be removed from the laboratory notebook.
The dated and signed notebook entries thereby record the invention as conceived and the progress made in showing the invention worked as intended, i.e., reduction to practice. Recall that a patentable invention requires two steps, conception and reduction to practice. Further, recall that creation of an adequately detailed patent application specification constitutes constructive reduction to practice. Again, the specification must teach enablement to a person skilled in the technology, i.e., describe the invention in sufficient detail to allow a person skilled in the technology to know how to make or use the invention.
The laboratory notebooks becomes the basis of filing a patent application. Ideally, a provisional application can be readily prepared from the notebook entries. With this strategy of prompt filing of a provisional application based upon the lab book entry, the description of the invention may be further supplemented at the time a non-provisional application is filed.
Also, please keep in mind that the First to File law is the patent is awarded to the person first filing the application that did not derive the invention from another. Deriving an invention from the inventor includes copying or plagiarizing the inventor’s work. Therefore it remains important to be able to prove your development of the invention. It is also important to document who has had access to your work, including the development of a working model or prototype (reduction to practice)
The lab notebook does not (hopefully) only record the date you made your invention, but also records the steady work that was made in attempting to achieve the invention. Long term diligent efforts to achieve success can overcome the “serendipitous success” of a competitor.
Documentation is key in the legal world. If it’s not in writing, it didn’t happen. Record, date and sign all efforts to achieve an inventive improvement.
Copyright David McEwing, 2019