Also, until 16-MAR-2013, the U.S. will still grant a patent to you if you were the first to invent and you filed within a year of publication. For applications filed before 16-MAR-2013, the patent office has a process to decide 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. E-notebooks are sometimes used and the same legal principles apply to them.
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. 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. Two witnesses are even better. 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.
The usual practice in an interference proceeding to prove prior invention is the submission of an affidavit (a “131 declaration”) to antedate the reference. That declaration must include facts that prove prior invention and satisfy a burden of persuasion. This was made clear in a 1974 appeals court decision: “[i]t was appellants’ burden to explain the content of these notebook pages as proof of acts amounting to reduction to practice.” In re Borokowski, 505 F.2d 713 at 719 (CCPA 1974).
Thus, it is often said that the best witness is a technical person who can understand the entry and can later provide corroborating testimony of the results. This is so because it will be necessary to prove a right to a date of invention based upon a technical person’s knowledge and also persuade the judge that the proof is reliable. Thus, the witness signature serves both provide proof that you made the entry when you said you did and also corroboration of the results.
You must have corroborating testimony to succeed in invalidating another person’s claims to the same invention. “[C]orroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.” Price v. Symsek, 988 F.2d 1187 at 1369 (Fed. Cir. 1993). An alleged prior inventor “must provide independent corroborating evidence in addition to his own statements and documents, [such as] testimony of a witness, other than [the] inventor, to the actual reduction to practice or . . . evidence of surrounding facts and circumstances independent of information received from the inventor.” (internal quotes omitted) Hahn v. Wong, 892 F.2d 1028, 1032-33 (Fed. Cir. 1989).
Chain of Custody. Keep the notebook secure from third party tampering. In order for the notebook to be admitted into evidence you will be required to prove that the notebook was continuously in the possession and control of a person that would not tamper with it.
Publications. Do not publish the results of your experimental work until you determine where and when you will be filing for patent protection. After 16-MAR-2012, you should not publish anything about your invention prior to filling a patent application. Even now, disclosing patentable inventions can limit or destroy patentability of an invention in other countries. 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.