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Patent Notebooks are Not Passé


Charles E. Bruzga
© Bruzga & Associates

As of March 16, 2013, the U.S. patent reform act entitled America Invents Act (AIA) will reduce, but not eliminate, the need to maintain well-kept patent notebooks.

In the U.S., a time-tested technique to prove that an inventor is the first-and-true inventor and therefore entitled to a patent is to maintain a patent notebook, ideally in the form of a bound (sewn) book with consecutively numbered pages. This is very important under the current law, which awards a patent to a first-and-true inventor located in the United States as well as abroad in NAFTA and WTO [1] countries which include Canada, China, France, Germany, Greece, India, Japan, Mexico, Republic of Korea and United Kingdom.  However,

As of March 16, 2013, the America Invents Act (AIA) will award a patent in a contest between competing inventions to the first to file a patent application in the U.S. and thus will scrap the current law which awards a patent to the first-and-true inventor.  Still, three reasons for maintaining well-kept patent notebooks are:

  1. The first-and-true inventor law still applies through March 16, 2013.
  2. Well-kept notebooks will provide competent proof of first inventorship in a “derivation” proceeding to be established by March 16, 2013, under the AIA, in which a patent will be awarded to an inventor who can prove that a competing inventor derived the invention from the first inventor.
  3. Inventors can rebut some types of obviousness rejections by showing evidence of superior and unexpected results, which are often expressed as data in patent notebooks.

Guidelines for Patent Notebooks

The following three sections discuss (1) techniques for maintaining the integrity of the chronology in a notebook, (2) making additions to the patent notebook, e.g., the use of “paste-ins;” and (3) recommended topical coverage.

1.    Maintaining integrity of chronology.  The following points illustrate practices for maintaining the integrity of entries in a notebook, which is critical for proving the dates of such entries.

  • Maintain a strict chronology, without gaps.  Maintaining a strict chronology of dated entries in the notebook will provide credibility as to the sequence of entries as well as providing an historical development of the invention.  Reasonable efforts should be made not to leave gaps in the notebook.  If a line(s) is left blank, simply draw a single line across each blank line and initial and date the lines. Generally, the first several pages of the notebook can be reserved or left blank for use as a “Table of Contents.”  This can be used for making “Table of Contents” entries after the completion of the notebook. However, the wording “Table of Contents” should appear at the top of the first few pages of the notebook to make clear the intention of leaving the first few pages blank.
  • Clear entries.  Start entries at the top of the first available page by entering the date (month, day and year) of the entry to be made. The content of the entry can then follow at the beginning of the next line, making them from left to right (or right to left in some languages).  Continue in this fashion to the bottom of the last page of the notebook, taking precautions to assign a date for each succeeding entry that is to be made. Of utmost importance is not to erase or remove material added to the notebook.  If changes need to be made, draw a line though the error(s) or any erroneous entries, followed by adding your initials; and then make the correct entry or entries immediately after or in the next available space.
  • Headings and consistency.  Headings should be used to separate topics and each entry must be dated and witnessed as described above.  Consistency in the use of headings, charts/graphics and numbering systems lends credibility to the chronology of the notebook.
  • Corroboration. Corroboration here means having someone who is not a co-inventor (and preferably not a family member or relative) witness your entry. This insures credibility as to the notebook entry and its corresponding entry date, as well as eliminating the possibility that the entry was unreliable or compromised by self-interest.  As such, the witness should be one who has the requisite technical background for understanding the invention and/or entry. To further insure corroboration of the inventive activity, it is highly recommended that at least two witnesses read each dated entry, and then writing in the patent notebook (after the entry) “Read and understood by (provide name)” together with the witness’s signature and date of witnessing.  If a witness or witnesses actually observes an experiment or the making of a recorded entry of the experiment in a notebook, then the witness can use the phraseology “Witnessed and understood the experiment, etc. described.

2. Paste-in additions to notebook, etc. Hardcopy materials should be dealt with in the following manner:

  • Refer to large materials.  Materials too large for the notebook can be entered in another record, but a dated written entry must be added in the patent notebook describing the material and its location in the other record.
  • Affix materials to notebooks.  All other materials that can fit into the patent notebook should be affixed to notebook pages with paste or with other means that will insure a degree of permanency of attachment.  Such other materials include printed pages, test equipment hardcopy, dated receipts, photographs and CAD drawings.  Include dated written and witnessed entries for each item.  For photographs, draw numbers within bubbles and arrows from the page onto the photograph, and in a nearby entry describe the features indicated.  The use of numbers in bubbles, etc., is a good technique to use for all graphics, charts and calculations.

3. Recommended topical subject matter for a notebook. The following are topical areas of items to record in the patent notebook:

  • Conception of invention. Original concepts of invention and relevant information, such as sketches, descriptions of the concept, motivation for the concept, and results of searches of prior art.
  • Observations.  Detailed description and results of all experiments, observations and conclusions.
  • Steps taken to reduce to practice.  Any other information showing progress in bringing the invention to its final conclusion (reducing an invention to practice). This can include a copy of an email to order parts or supplies for carrying out an experiment.  The general rule is “the more information, the better.”
  • Public disclosure of invention. Optionally, records of any public disclosure of the invention, including discussions with potential customers, offers for sale, and sale orders.  This information is critical in any event, and must be disclosed to the patent attorney.

The foregoing guidelines and procedures will help create trustworthy evidence of inventive activities, and if followed, will withstand most challenges made by the courts or opposing entities.

 

 


[1] 35 USC 104 (a) (1).