How to Keep an Invention Notebook

Why keep a notebook?

The U.S. follows a first to invent policy when determining patent rights. The first to invent policy means that an Inventor can trump a patentee with an earlier patent application filing date or overcome a reference with an earlier publication date. Establishing a date of invention may include reducing an invention to practice or conceiving the invention and remaining diligent in its reduction to practice. The question then becomes. . .What is necessary to document the invention? As a quick primer we’ll look at the proper format and contents of an invention notebook.

Format: First we’ll review the proper format of a notebook. It is important to follow an acceptable format because if the invention is not documented correctly there may be no way to establish critical dates of invention. Priority may therefore rely on proper notebook entries.

Bound Notebook. A notebook should have permanently bound pages. In other words, pages should not be removable or capable of insertion into the notebook. This means loose binders or clips should be avoided. Appropriate notebooks or journals may be found in a variety of stores.

Entries on each page. The inventor should use every page of the notebook. Blank pages should be crossed out. Blank pages suggest an inventor may have returned to earlier pages and added entries. Even if multiple experiments are conducted, pages should not be left blank for later entry.

Writing across the entire page. Just like writing on each page, if there is a blank region on a page it should be crossed out. Again, this protects against arguments that an entry was provided at a later date.

Signing and dating entries. The inventor should sign and date each page.

Witnessing entries. Each page should be witnessed. An individual able to understand the invention but not involved in the project should sign each page. Preferably two witnesses should sign and date each page. This helps ensure at least one witness will be available should it be necessary. It should be kept in mind that witnesses should be bound to confidentiality.

Content: Now that we have examined what kind of notebook should be used and how to make an entry the next question is . . What should be entered in the notebook?

Theories and Ideas. Under U.S. patent law, conception plus diligence trumps reduction to practice. In other words, if an inventor conceives of the invention and remains diligent with experimentation to develop the invention, the inventor can trump a corporation that is second to conceive but first to fully construct the invention. Therefore theories and ideas should be entered in the notebook.

Drawings. We’ve all heard that a picture is worth a thousand words. So why not provide sketches or drawings? Drawings can help display concepts and key components of an invention. Figure descriptions may assist the reader in understanding what is provided in the drawings.

Procedures. Any methods used to practice the invention should be completely described. This includes any protocols, reagents and instructions. An invention without an adequate description of how to make and use the invention may be deemed not enabled and therefore invalid.

For more information, please contact a registered patent attorney.

Happy Inventing!

Raymond

First things first

(PHONE RINGS)

“Hi, this is Hal Gibson”

“Yes, I’d like to patent this wonderful new sandwich I came up with, its got cheese, and turkey, and . . . “

and as the prospective patentee goes on, once again I launch into the four requirements for patentable inventions.

First, the subject matter of the invention must be patentable. This is a relatively easy hurdle, as it includes just about “anything under the sun that is made by man.” So, the sandwich meets the first requirement.

Second, the invention must be useful. While a patent applicant can no longer claim utilities such as using DNA sequences for landfill, or transgenic mice for snake food, the utility requirement is not difficult to meet, and Sandwich Boy is not out of luck just yet.

Third, the invention must be novel. If it is not new, there is no reason for the Patent Office to allow you to patent it. So, assuming the sandwich is novel, we move on to the last requirement.

Finally, the invention must be non-obvious. Here is where Sandwich Boy hits the wall. Though his sandwich may be “made by man” and quite useful, and may even be groundbreaking in the field of sandwich technology, the sandwich is nothing new (see more here) and Sandwich Boy will have a tough time convincing the Patent Office otherwise.

Take Care-
Hal