Patent – Inventor Contemporaneous Notes
Patent gives the owner the right to sue anyone who claims to have come up with the idea first or manufactures or markets products or services that flouts the claims made in the patent. A patent is generally awarded on first to file or first to invent basis. Currently in the US, the patents are granted to the first inventor and not the first ones to file an application for the patent. Hence, contemporaneous records for inventors are very useful to prove the authenticity and credibility of you being the originator of the idea while filing the patents in the patent’s office. In case you have to face the court, these notes can be referenced to prove that you were the first one who came up with the invention.
Contemporaneous records are the notes that an inventor makes while recording the activities conducted related to invention. These records should be time and date stamped and can be shown to anyone else later on, proving that you thought of the idea first and it is your invention. Each and every detail right from the conception of the idea to ultimately filing for a patent should be jotted down on a notebook. Records which have complete details related to the patent serve you better. No records or a partially written notebook is as good as nothing and does not protect you and your invention from being stolen.
The technological development activities that are conducted before filing a patent can lead to very strong patents if properly managed. In case of no management, there will either be no patent or trade secret or worthless patent or someone else’s patent. In Yeda Research And Development Co. v. ImClone Systems and Aventis Pharmaceuticals (S.D.N.Y. Nov. 3, 2005), Yeda sued ImClone alleging improper inventorship of U.S. Pat. No. 6,217,866. There were no ‘documentary evidence’ found by the court that suggested any of the inventors listed had come up with the claimed invention and found that Yeda engineers had enough proof to get entitled for sole inventorship and hence ownership of the patent. Till date, ImClone has received about $900 million in revenues under distribution agreement. This case brought to light the fact that if development activities and technological advances are not contemporaneously recorded, it may lead to a very expensive burnout.
While maintaining contemporaneous records, the patent should be filed immediately as soon as the invention is done, else, it is essential to maintain an engineer’s or inventor’s notebook. Even if the idea is not ready yet, or the invention lies halfway or had to be halted due to some unforeseen circumstances, or even if you have not yet decided to patent the invention, maintaining contemporaneous records or keeping a notebook becomes necessary. Some may complain that maintaining minute by minute or day by day record involves a lot of work and is a tedious process but all said and done, this will become a crucial part of your development process later on.
These notes need to be written down in ink so that they cannot be erased or smudged later. They should be clear, concise and legible so that can be understood by another engineer or the court, if they are produced there. They should be maintained consistently and no crucial detail should be left out. They should be sequential and numbered. For every invention a separate notebook must be used. It is said that Thomas Edison had over 2,500 invention notebooks. The invention in itself is not complete unless it has been “reduced to practice”. This means that either a patent has been filed or practical application has been build. There should be explained scenarios and detailed events while making a prototype of the invention.
The first page of these notes must contain the conception of the idea or the invention. This is just the basic idea and does not contain any exhaustive details. It should include the title, situations leading to the idea, problem statement, graphical description, how it can be useful, why you think the idea is new, inspiration if any, advantages and names of the inventors and date and time. This will establish the date when the idea came to you officially first and can be sent to the employers and colleagues to decide whether or not to pursue the invention or trade secret protection. Use technical language, charts and numbering systems. Any mistake should be crossed by drawing just one line so that it is still readable. In case any update has to be made then make it at the end of the page or chapter, referring to the line where update needs to be made and mentioning the date and time when the update was made. No blank spaces or pages should be left in between so that it is not doubted in the court in case of patent contestation or patent-related lawsuit.
These notes should be duly signed along with the date by all the .inventors and a witness who understands the invention and is unbiased, for e.g., your senior in office but not your brother. If the witness is not available everyday then you should get it signed as soon as you get hold of him. Never ever a page should be edited once it has been read and signed by a witness. To prove that you were the first to invent, the witness is called to the stand to testify that he is the one who signed the copy on that particular date. In Huang v. CIT (CD Cal. 2004), Huang sued CIT to name him as one of the inventors of CIT’s patents. Huang’s laboratory notes were patchy, not sequentially dated and not witnessed by anybody. The court ruled in the favor of CIT.
Any kind of other documents that may support your invention should become a part of the contemporaneous records. These may include invoices, receipts, pictures, sketches, graphic drawings, emails and other kinds of notes. Any test or experiment that may have been conducted as a part of the invention process should be properly recorded along with the reason and all the details. All the participants must be made to sign a non disclosure agreement which proves very useful in case of public disclosure. Any kind of work related to the patent that happens like meetings, telephone calls, emails and other writings should be maintained contemporaneously. The slides and disclosures made in the presentations and reports should be added to these notes.
In cases where one has to disclose the contents of the notebook, for e.g., witness, lawyer, judge, patent examiner, one needs to minimize the risk as a result of relinquishing your confidentiality. This can be done by noting the interactions with third party not in your inventor’s notebook but a separate notebook. This notebook will be maintained contemporaneously as well, as it may prove valuable during litigation purposes over an invention.
The physical notebooks if not protected properly may fall into wrong hands and be tampered with. The pages could be removed, edited, replaced or changed. Such notebook is useless as it cannot be trusted once it is played around with. Electronic notebooks or virtual notebooks are an alternate method of maintaining your notes. These notebooks received some flak initially, but are now quite prevalent due to the security layers that are being provided by various service providers. Such books are easy to use, easy to maintain, accessible all the time and automatically do date and time-stamping, making them even more genuine in the court.
A contemporaneously built inventor’s notebook may turn to be a boon if used properly. But it is of no use, until the patent has been filed. Hence, delay in filing a patent application may cause a major setback to your invention, especially since various countries are now moving towards first-to-file system of patenting. Your hard work may become pointless if the invention is not under your name. Therefore, file your patent to secure exclusive rights in an invention at the earliest and keep every record related to it in your notebook.
Communities. Take Note: Protect your invention. Retrieved from, http://fisher.osu.edu/supplements/10/9997/IP%20Protection.pdf
University IP Process for inventors, College of Engineering, University of Puerto Rico, Mayaguez. Retrieved from, https://www.google.co.in/url?sa=t&rct=j&q=&esrc=s&source=web&cd=1&cad=rja&uact=8&ved=0CB8QFjAAahUKEwjz3aH9-avIAhXFC44KHWBRBWE&url=http%3A%2F%2Fengineering.uprm.edu%2Fopitt%2Fwp-content%2Fuploads%2F2014%2F02%2FUniversity-IP-process-for-inventors.pptx&usg=AFQjCNFXn1kKVMOziUZe-MiN2F3Mgck7BA&sig2=ob3y3Vj_5xTnBoiD3fH3TQ
The United States Patent and Trademark Office,.(2001) Duty of Disclosure, Candor and Good Faith. Retrieved from, http://www.uspto.gov/web/offices/pac/mpep/s2001.html