RECORDING YOUR INVENTION
- YOUR INVENTIONRegardless of the method of inventing used, detailed records of concepts, test results, and other information related to making invention should be maintained. Proper record keeping is important because it can be used as proof of the conception date – a.k.a. the date of invention. It should be noted that mailing yourself a sealed letter with invention documents enclosed is not an accepted method of proving your invention’s conception date for the United States Patent & Trademark Office (USPTO).
The conception date used to be important since it was utilized to argue against prior art cited by the USPTO or in an interference proceeding. However, effective March 16, 2013, the United States switched from a “first to invent” patent system to a first to file patent system. The conception date for your invention can still be valuable in a dispute with a third-party, but you should focus on filing your patent applications earlier than later.
The conception date may be relied upon as the date of invention for determining patentability and priority only if the inventor exercised due diligence in reducing the invention to practice. This is accomplished by the inventor exercising continuous activity from before the reduction to practice date of another invention to the date of reduction to practice. Reduction to practice may be accomplished by either: (i) filing a patent application, or (ii) constructing a prototype. Continuous activity does not mean the inventor has to work on the invention every waking minute.
To establish diligence, the person must account for the entire critical period from the time just prior to another’s conception. In determining priority, there is no race of diligence. The first to reduce to practice prevails regardless of lack of diligence unless the second to reduce to practice shows sufficient diligence.
Detailed record keeping is one of the most important parts of the invention process, yet few inventors maintain adequate records of their invention. The following information provides a proposed outline for maintaining invention records. Neustel Law Offices, LTD also has an Invention Recording Document that you may utilize for recording your invention.
- BOUND NOTEBOOKAll inventors, whether individual inventors or employees of a business, should maintain a bound notebook. The information in the notebook is useful proof of when an invention was made, and whether the inventor was diligent in developing the invention.
A good notebook entry also can be helpful in proving that an invention is not obvious and was developed independently, without copying a competitor’s product or patent. The probative value is not nearly as great, however, if a loose-leaf notebook is used in which pages are easily inserted or removed. It is also important to line through any blank portion of the pages of the bound notebook.
Employers should have a secured location where both completed and uncompleted notebooks may be stored. Also, each notebook should be assigned a consecutive number to identify each notebook. Records of when each notebook was taken from the secured location and placed back in the secured location should also be maintained.
- SIGNED AND DATED ENTRIESEvery entry in the bound notebook should be signed and dated by the participants, indicating the particular project with which the entry is associated and, if possible, the entry should be signed and dated by an unbiased witness or Notary Public. It is often advantageous to include a header on each notebook entry such as:
- DETAILED ENTRIESThe value of an entry into a bound notebook is directly proportional (i) to the specificity of the entry, (ii) to the care taken to date and sign each entry, and (iii) to whether each entry was read, signed and dated by a witness. Therefore, each notebook entry should clearly identify the nature of the entry with particularity and contain all relevant details. An entry such as “work on new cylinder” provides little useful information.
Entries should contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable another person having ordinary knowledge in the field of the invention to make and use the invention.
All computations, sketches, diagrams, test results, etc., should be contemporaneously entered into the notebook. Notebook entries should also describe all testing performed (not just some of the testing), the particular type of equipment used, and the results of the testing, both good and bad.
- IDENTIFICATION OF PARTICIPANTSAll persons involved in the work, and their specific role, should be identified in the notebook entries. Unless participants are identified, it is often difficult to establish, long after the fact, those involved in particular activities. This type of information is also necessary to identify those who will be named in the patent application as the inventors. This is important because if not all of the inventors are named on a patent application, an issued patent may be declared invalid because of fraud on the USPTO.
- LOOSE DOCUMENTSIt is important that all loose papers, such as drawings, test results, photographs of models, etc., be signed and dated, cross referenced to a particular notebook entry, and preferably, then mounted (taped or stapled) in the body of the appropriate notebook entry. Similarly, physical embodiments used to carry out various tests, such as samples, models, prototypes and the like, should be carefully labeled with a date, cross referenced to notebook entries, and retained.
LEGAL DISCLAIMER: This web site provides general information only, not legal advice. You should not act upon this information without independent legal counsel. You must read and agree to the Terms of Service before viewing this web site. The NIFC is not associated with any Federal or State government agency. If you have been harmed by an invention marketing company or patent attorney, you should immediately seek the legal assistance of a reputable attorney licensed in your state. Michael S. Neustel is licensed to practice law only in North Dakota and in the United States Patent & Trademark Office. Michael S. Neustel is the owner of Neustel Law Offices, LTD and Neustel Software, Inc. Statements made in this web site are merely opinions of the National Inventor Fraud Center, Inc. and should not be interpreted as factual. Neither Michael S. Neustel nor the NIFC market inventions, provide market analyses or provide marketability analyses for inventors. You are strongly encouraged to investigate any company or law firm you plan to work with and do not rely solely upon this web site when selecting a company to work with. Only you can determine if the companies listed on this web site are reputable or not.
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