Ignore U.S. Research Record Keeping Principles at the Peril of Your U.S. Patent Portfolio

After January 1, 1996, the non-U.S. WTO applicant for U.S. patent protection will have the advantage of being able to prove an actual date of invention by evidence of work done outside of the United States. This new provision in U.S. patent law makes critically important that there be a thorough review of procedures for recording experimental work in non-U.S. WTO laboratories and engineering centers to insure that the practice will provide satisfactory and convincing evidence of invention. Otherwise, full advantage of the changes to the U.S. law may not be realized. The non-U.S. applicant who continues the practice of simply relying on a foreign filing priority date will be at a distinct disadvantage, even against non-U.S. interference opponents.

The most important evidence to prove an actual date of invention is frequently the laboratory notebook. Research notebook keeping practice in the United States has been significantly influenced by U.S. interference law and the USPTO rules permitting "swearing back" of prior art references in the ex parte prosecution of patent applications. In turn, U.S. practices in keeping laboratory notebooks have influenced the law, which has come to expect to receive that quality of notebook record keeping. In the past, this has not been as important an issue for the non-U.S. patent applicant because the prior law forbade reliance on any acts of invention outside of the United States. The non-U.S. patent applicant could then do no more than rely on the foreign priority patent filing. Now, after GATT and certainly as of January 1, 1996, non-U.S. researchers will be well advised to model their record-keeping after U.S. custom and habits in order to assure themselves of maximum future patent benefits.

BASIC U.S. REQUIREMENTS FOR PROOF OF INVENTION

"Invention" in the United States is composed of two elements: "conception" and "reduction to practice." Both conception and reduction to practice must include the idea of a use for the invention if the use is not immediately obvious from the nature of the invention. These acts must have been done by the inventor or co-inventors. To prove a date of invention, evidence must be presented establishing that those events took place at the time asserted and were done by the inventor(s). The evidence will typically be of writings of experimental research work and possibly physical samples or pictures of the product of the invention.

More than that, however, U.S. interference law requires that the inventor's evidence of his work be "corroborated". This generally means that there must be a non-inventor witness who can testify (by oral deposition or affidavit) that he "knew", "saw", "read", or otherwise had direct knowledge of the inventor's conception and acts of reduction to practice at the time they are alleged to have occurred. Importantly, co-inventors cannot corroborate each other's work. Knowledge, in connection with the corroborating witness, also implies and requires that he "understood" what he "saw" or "read" at the time. Lack of corroboration evidence can be fatal to the assertion of a date of invention earlier than a priority application filing. The inventor's testimony by itself, even if backed up by dated invention records, may not be given any credibility--it will be disregarded as merely self-serving. Sometimes it is said that of all witnesses in the U.S., inventors are the only ones who are presumed to be liars.

From the standpoint of proving a date of invention, the worst thing an inventor can do is to fail to make a disclosure of what he is doing to someone else. He must have someone to serve as a corroborating witness to what he did.

Finally, the issue of "diligence" frequently controls the outcome of an interference priority contest. Diligence generally means steady, constant, substantially uninterrupted work towards reducing the invention to practice. The general rules are that

(1) the party first to conceive and first to reduce to practice will win regardless of "diligence";

(2) a party who is first to conceive but last to reduce to practice can still win provided that he can show he acted with "diligence" in working towards the reduction to practice from a time just prior to the other party's entry into the field; and,

(3)a party second to conceive but first to reduce to practice will win if the first-to-conceive party was not "diligent" towards the later reduction to practice from at least the time the second-to-conceive party was itself "diligent" towards the earlier reduction to practice.

Meeting the evidentiary requirements for actual invention, corroboration and diligence is no easy task and the effort will fail if proper preparation is not made for establishing and creating that evidence at the time the acts occur. Further, that evidence must have unquestionable authenticity as to its date and it must be preserved in its entirety. This paper suggests that the non-U.S. WTO company needs to pay close attention to and probably revamp the procedures it uses for such records and their preservation.

SPECIAL ISSUES FOR RESEARCH NOTEBOOK RECORDS FROM THE PATENT PERSPECTIVE

Preliminarily, it should be obvious that a clearly written and complete notebook may and can save a great deal of money in services by the patent attorney for the preparation of the patent application--the notebook itself becomes the basis for the examples in the application and perhaps even for the drawings.

More importantly, a well-conceived and maintained notebook will be the prime evidence of personal inventorship and to establish a date of invention for priority purposes in U.S. interferences. A properly and timely witnessed notebook becomes the critical evidence for corroboration of the inventor's conception and of the work towards the reduction to practice.

As noted above, corroboration requires a competent non-inventive witness, a mere secretary will not do. Therefore, especially for corroboration of the conception, the witness should be a technically competent person who would have the ability to "understand" the nature of the proposal and with whom the inventor could have had a scientific discussion about it. Herein lies the importance of "witnessing" the notebook pages, with understanding of what was written. The signing, or witnessing, should also be done on a daily basis.

For the reduction to practice, the test is a little less severe. Here the witness must be able to testify as to what work was actually done, but perhaps with less understanding of what it is all about.

But, remember again that co-inventors cannot corroborate each other's work. For this reason, colleagues working on the same project may not be suitable witnesses because they may well conceive and contribute additional ideas and become co-inventors on the ultimate patent application. (Note that the custom in some organizations of naming numerous co-inventors is not a good practice in this respect --each of those named persons is thereby eliminated as a potential corroborating witness.)

An excellent practice to follow after an invention has been reduced to practice by the inventor would be to have a different person repeat the process or operate the machine and then record the fact that this was done. Imagine how powerful the resulting testimony would be that what the inventor had done did indeed work.

Finally, the regularly-kept and witnessed notebook is the essential piece of evidence to establish diligence. As already noted, establishing diligence from the date of conception may well overcome another party's earlier date of reduction to practice, or even an earlier conception. However, a corroborating witness' signature in September to an inventor's signed notebook page made in July, may only establish the September date for the work. Again, timely witnessing of the notebook can be critical.

U.S. diligence law can be very strict. Even one unexplained day of inactivity at the critical period could lose an interference. Consequently, this is one place where it is important that the notebook may properly contain extraneous explanatory entries such as "waiting for sample analysis", "resubmitted shaft for re-machining", or the like, and even entries unrelated to the work at hand such as "out sick [date]", "vacation", "wife ill, stayed with child". These last entries are easy to make at the time but difficult to recall and establish several years later when they may have been forgotten. Yet, they may be invaluable in a priority contest to explain an apparent absence of diligence. Alternatively, a well-maintained diary with such entries can serve this purpose. Research staff should be especially informed about the potential importance and significance of these entries.

These same records may also be essential to overcome a non-statutory-bar prior art reference under PTO Rule 131. That is, a reference which is less than one year prior to the U.S. filing date (or, after GATT, the filing date of a U.S. provisional application) can be overcome by evidence of prior invention (including earlier conception followed by diligence to a later reduction to practice, actual or constructive) even where the foreign priority patent application filing disclosure may itself be too late or insufficient for this purpose.

FUNDAMENTAL ASPECTS OF NOTEBOOK RECORDS FOR SOUND EVIDENTIARY PURPOSES

The date of a record entry is of critical importance. Therefore, notebooks need to be permanently bound. This avoids challenges to the integrity of the pages and prevents substitutions. For this reason computer-recording is not presently satisfactory by itself. Computer records can be altered and have no provable date integrity absent special archival provisions.

Notebooks should be designed for the specific purpose of recording research records. This means good quality, archival paper and permanent inks. Permanence is a serious issue and the recording should have a reliable predictable lifetime of at least about 30 years. An archival, non-alum, non-gallic acid-treated, but buffered, non-acidic paper should be used--with a permanent, non-acidic, solvent-based black ink. Acidic papers deteriorate over time. Colored inks (red, blue, etc.) are formulated with dyes, which inherently decompose and fade on exposure to light. Inks which are acidic will tend to decompose the paper on which they are written. Water-based inks are easily smeared, and can lead to unclear or illegible entries. The added cost of a good paper and ink will likely amount to less than 0.1% of the project budget--it is foolish to scrimp on cheaper materials at this critical level. In addition, the notebook should be so made as to open and lay flat on the desk for ease of writing and copying . A notebook that is difficult to use does not encourage regular entries.

Some U.S. companies have instituted rigorous policies which insist on signing and witnessing of notebook pages before leaving the laboratory each day. In addition, there is increasing use of making a (daily or weekly) read-only optical disk image of the notebook pages. This medium provides an unalterable permanent record estimated to last 100 years and with a high level of integrity for use as evidence. It is also an approach which can give date integrity to computer-recorded entries if the optical disks are regularly made and carefully archived.

Each notebook should have its own unique number identification, and a log should be maintained as to when and to whom it is issued. Further, when completed it should be returned to a record-keeping authority. As to contents, the notebooks should have in the front a printed set of instructions as to how they are to be maintained and an identification page for entry of the name of the researcher, the date of the beginning of the notebook and the date when it is completed. There should also be provision for a table of contents, for entries by date and page number with concise one-line key-phrase identification of the work done on each page. It is also a good idea to encourage a separate "idea" notebook, and/or a diary or personal journal of activities. At a minimum, the latter serves as a device for future testimony to refresh recollection as to what generally was going on at the time.

The pages of the notebook should be sequentially numbered, commonly from 1 to 100, permitting an orderly system of sample numbering and product references, i.e. sample numbering = [notebook number]+[page number]+letter suffix, [if needed for multiple samples on the same page]

The actual notebook entries should be sufficient in content and sufficiently clear in writing to permit duplication by a stranger of the actual work. This should include details of the materials used, equipment used and a diagram, and the conditions employed. While it may seem tedious, it is far better to state the obvious and the routine than to leave it for future guesswork. It is just as important to record failures as it is to record successes. A list of failed experiments may even be powerful evidence of unobviousness.

While some flexibility has to be permitted and tolerated (so that the creative individual's personal desires are accommodated which may also encourage a good notebook), some uniform organization of entries is desirable. A suitable format is Introduction or Purpose, followed by Experimental Plan (forces orderly thinking), Observations and Data (write it down promptly, when it occurs), Discussion of Results (what do those numbers really mean), and then Conclusion (again, this requires a thoughtful evaluation of what has just been done).

Importantly, the write-up in the notebook should also include some statement as to the intended use or utility of the work being done. It is a Constitutional requirement in U.S. patent law that inventions be "useful". More than one inventor has lost rights to a U.S. patent because of a failure to establish that his conception or his reduction to practice related to something which is "useful". This comment especially applies to inventions in the chemical and electronic fields where the use may not be immediately obvious.

Each page should identify the project or sub-project--either by code name or number. If the work includes machine printouts of data, those records should be taped or pasted into the notebook with clear identification of the samples tested. For patent purposes, it is even entirely appropriate, indeed highly advisable, to record library research, correspondence, ordering of materials, the time required for setting up the equipment, etc.--all of which may be very useful to establish diligence.

Project files with progress reports should also be maintained by the director of the project who should also keep a records of instructions for the work to be done, who is to do it, the notebooks in which the work is to be recorded, and budget and expenditure records for the project. This is in addition to a records manager who should have a record of all company documents, including notebooks, which have been issued to each employee (useful to collect back upon termination of employment).

It is good practice to use internal cross-references within the notebook--i.e., write up standard procedures and cross-reference back to those when used, and to define abbreviations. This can save much recording time and encourages entry of deviations from the standard ("except that this time I used ..."), which might very well become the invention itself.

Ideally, periodic supervisor inspection of notebook record will help ensure that the notebooks are fully, properly and timely recorded and witnessed, in black ink, indexed, and carefully preserved against damage.

THE PLANT LOG BOOK

Log books of an operating plant present special problems in that there are generally multiple authors. Here it is all the more important to have a standard protocol for data entries as with the common pre-printed form. However, thought should also be given to providing a format which invites recording the unusual event or result, or developments, especially in de-bottlenecking of manufacturing processes. Small changes which may lead to significant operating improvements may not seem dramatic enough at the time to operating plant engineers, but they can frequently lead to valuable patents.

EMPLOYMENT AGREEMENTS

Also, in light of GATT, employment agreements should be carefully reviewed to assure they include: (a) provision for company ownership of the notebook records of the work, (b) company ownership of all data and work related to the company's business, (c) the obligation of the employee to maintain records of his scientific/engineering work, (d) the obligation to preserve the secrecy of the company's proprietary information and not to compete after termination of employment (on reasonable terms); (e) the obligation of the employee (even after termination of employment) to aid and assist the company to establish that the work was done and what it was, (f) the obligation of the employee to execute and assist in the preparation of patent applications, assignments and evidentiary papers. For instance, a clause such as,

"Employee agrees to record and maintain full and current written records of my research work and in particular of any discoveries, improvements or inventions through my notes, sketches, drawings, notebook entries and reports relating thereto which records shall be and will remain the property of and available to the company at all times."

And also one such as,

"Employee agrees to sign or otherwise execute, during and after the term of employment, any documents reasonably required by the company to evidence assignment of the invention and all patent rights thereto to the company and also to assist the company through testimony and execution of documents to establish the date of conception and reduction to practice of any inventions made by Employee."

The above responsibilities and obligations of the employee should be considered to be part of the "consideration" for employment and salary paid. While many of these items may already exist in employment agreements, their importance will now be far greater in light of the GATT changes to the U.S. patent laws.

SUMMARY

The above discussion summarizes what is believed to be well-known research practice and basic procedure followed in the U.S. It will behoove the WTO research manager to assure himself that his practices adhere to these principles. Otherwise, the research investment may not enjoy the maximum patent protection it could have had, and that can be extremely costly. It should not be overlooked that the resulting advantages will be realized against the both the U.S. and the non-U.S. competitor who fails to heed these guidelines.

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