NOTEBOOK TO DOCUMENT WHEN AN
INVENTION IS MADE
 Why Keep a
Notebook. United States patents are issuable to the first to
invent, not the first to file for a patent. On the other hand, most
foreign patent offices issue patents to the first to file for a
patent. So, in the United States, keeping a lab notebook can
be a key piece of evidence in helping to decide who was first to invent
and therefore who deserves the patent, among two or more competing
inventors who happen to be claiming a patent for the same invention.
This happens occasionally and when it does, the patent office starts a
"patent interference." A patent interference is an
administrative proceeding pursuant to title 35 of the United States Code,
sections 102(g) and 135(a), conducted for the purpose of determining which
of competing applicants is the first inventor of common subject
matter. This proceeding is when an inventor's notebook, detailing
the timing and scope of his invention, comes in handy.
Best Practice for Proving Conception.
When an inventor is involved in research, it is a good practice to keep a
contemporaneous notebook of research and conclusions. A bound
notebook is best for proving conception because its pages are fixed and
tampering would be evident. The notebook should be continuous, that
is, any blank portion of the pages of the bound notebook, which are not
written upon, should be marked or lined-thru to show continuity and a
consistent effort to foreclose any potential for later alteration of your
notebook.
Contemporaneous. A notebook's entries
should be made as information (computations, sketches, diagrams, test
equipment used and test results) is gathered. It is recommended that
notations in the notebook be made each day research is done, so that a
complete and convincingly accurate record of the research activities is
made almost at the same time as any invention emerges. This
practice will help to establish priority dates and adequately describe the
invention.
Nature of the Notebook. A notebook should
be treated somewhat like a diary, but should have formalities that lend
themselves to proving to a third party what was done and when. The
notebook should be stored in a secure location when not in use, so that
when offered as proof, it cannot be claimed that others could have
tampered with the entries.
Entries Made in Ink. Legibly enter your
notations in ink. Do not erase any mistakes. When correction is
necessary, cross out the errors with a single line, then date and initial
the changes. You should sign and date each page below the entered
data. If there is more than one inventor, all should sign.
Abstract Heading for Chapters. As an
organizational theme, it would help to set out with a chapter heading for
each series of pages relating to a specific research objective. This
theme is a short and generic statement of problem and the work that is to
be performed and described in the pages to follow. Keep it factual
and avoid trying to describe what results are expected. Gratuitous
conclusions are neither helpful nor necessary and generally detract from
the scientific credibility of the notebook.
Describe the Scope of the Experimental Results.
Explain in detail the work performed and start a new page for each new
experiment. As with most scientific research, you should record your
observations of physical results, even if they are not fully appreciated
or understood at that time. This also adds to objectivity and
believability. Experimental results that demonstrate the practice of
an invention should contain a paragraph describing the various potential
embodiments of the invention with the applicable variables and the reasons
the results are expected to be relevant. Title the paragraph
"Modifications and Extensions." It is not necessary to
include complete data as such will probably be unavailable. Such a
paragraph may help provide a valid basis for a generic and species patent
claims.
Witness your Entries. Have someone, who
is not a possible inventor, sign and date after the last line of each
entry. Two witnesses are even better. The witness signature
does not have to be at the bottom of every page, but should be on every
page where a new invention is noted. The signature of the witness is
helpful to prove that you made the entry when you said you did.
Corroboration adds to reliability and believability of the notebook
entries. The witness should be unbiased with respect to ownership of
any resulting invention or any research results. A Notary Public may
be used, but is not required.
Publications. Do not publish the results
of your experimental work until you determine where and when you will be
filing for patent protection. A publication (including
abstracts) disclosing patentable inventions can limit or destroy
patentability of an invention. In the United States, one can file a
patent application within one year of public disclosure. However,
most foreign countries will not approve an application claiming an
invention for anything already described in a publication. See the FAQ
page for more discussion of this prohibition.
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This file last modified 05/23/07.
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