Action Under 35 U.S.C. � 146 Summary of Priority for the Parties by HC120727095022


									   First to Invent vs. First to File:
The Importance of Keeping a Proper
        Laboratory Notebook
            Edwin V. Merkel
            Carissa R. Childs

        A Professional Corporation
          290 Linden Oaks, Suite 310
            Rochester, NY 14625
What You Will Learn Today
 Something About Patent Law and the Likely
  Changes to the Law
 Why Your Notebook Matters
  • Use your notebook to remove rejections raised during
    prosecution of your patent application
  • Use your notebook to win a contest with another party
    trying to patent the same invention
 What You Can Do to Make Sure Your Notebook
  is Acceptable as Evidence

Patent Reform:
The End of the First to Invent System?

 Current Law = First to Invent:
  Inventor with earliest date of invention is entitled
  to a patent (if all other requirements of
  patentability are met)
   • Unique to U.S. Patent System
 Proposed Law = First Inventor to File:
  The inventor with the earliest patent filing date is
  entitled to a patent (if all other requirements of
  patentability are met)
   • Single exception under new law

Patent Reform:
The End of the First to Invent System?
 Pending Legislation
   • March 2011: Senate passed Patent Reform bill
   • June 2011: House passed revised version of bill
   • This week: Senate voted to end debate on the
     revised House bill and move ahead with a vote
 Effective Date of Pending Legislation
   • 18 months after enactment (for aspects related to
     first inventor to file)
   • Current laws will still apply to all patent application
     (and patent) claims having an effective filing date
     before the date the new laws take effect
Requirements for Patentability
 Patentable Subject Matter
  • Any new and useful process, machine, article
    of manufacture, or composition of matter
 Prior Art Identified Under Section 102 of
  Current Patent Law
  • 102(a) identifies prior art “known or used by
    others in this country, or patented or described
    in a printed publication in this or a foreign
    country before the invention thereof by the

Requirements for Patentability cont.

 Prior Art Identified Under Section 102 cont.
   • 102(e) identifies “secret” prior art: published U.S.
     patent application (or PCT application designating the
     U.S.) or issued U.S. patent filed by another before the
     invention by the applicant
   • 102(g) identifies as prior art any subject matter of a lost
     interference between two or more parties; basically, the
     other party establishes during an interference
     proceeding that they invented the claimed subject
     matter before you

Importance of Keeping a Proper
Laboratory Notebook

 Laboratory Notebook is an Evidentiary
  Record That Can Be Used to Establish:
  • Patentability of Invention
     – Establish date of invention to remove prior art under
     – Establish priority of invention during an interference
  • Determine Inventorship

First to Invent vs. First to File

          Date of Filing

 Date of Invention   Date of Filing

 First to File System (Pending Law)
   • A is entitled to patent

 First to Invent System (Current Law)
   • B may be entitled to patent if B’s date of invention
     predates A’s filing date or date of invention

First to Invent: Eliminating Prior Art

          Date of Filing

 Date of Invention   Date of Filing

 If A is Cited as Prior Art, B May Still Be Entitled to
  Patent if B’s Date of Invention Predates A’s Filing

First to Invent: Eliminating Prior Art cont.
 Prior Art (recap)
   • Any printed publication, use, or knowledge of invention by
      another before applicant’s date of invention
   • “Secret” prior art—a published patent application or issued
      patent by another that is filed before your application
 Filing Date of Your Patent Application is Considered Date of
  Invention Until Proven Otherwise
 Eliminating Prior Art
   • Submission of a sworn declaration by all inventors along with
      notebook evidence corroborating a date of invention that
      antedates the date of the prior art (publication or filing date)
   • This is not available for those publications having a
      publication date that is more than one year before your filing

 First to Invent: Interference

Date of Invention Date of Filing
 Date of Invention       Date of Filing

   If A and B Are Claiming the Same Patentable Subject
    Matter, then B May Be Entitled to Patent if B’s Date
    of Invention Predates A’s Date of Invention
   Statistics Suggest That the Party Who is First to File
    is Usually, but Not Always, the First to Invent

First to Invent: Interference cont.

 Interference
   • Contested proceeding in the U.S. Patent and Trademark Office
     (PTO) between at least one patent application and either another
     patent application or patent claiming the same patentable subject
     matter to determine who is entitled to a patent
 Presumption at Outset
   • First to file (Senior Party) is first to invent unless the party who is
     later to file (Junior Party) can demonstrate priority of invention
 To Win
   • Junior party must overcome presumption and prove earlier date of
     invention; if not successful, Senior party wins
   • No abandonment, suppression, or concealment

Date of Invention
 Conception of Invention (Mental Part)
   • Recognition of a definite and permanent idea of the
     complete and operative invention

 Reduction to Practice (Physical Part)
   • Actual: making and testing the invention
   • Constructive: filing of a patent application

 Diligence
   • Establishing applicant’s continual work to reduce the
      invention to practice after conception

 Corroboration
   • Evidence and witnessed testimony that independently
     confirms the facts presented by the inventor(s)

Winning an Interference
          Conception      Actual             U.S.
                        reduction           filing
                       to practice          date

                      Actual                          U.S.
                    reduction                        filing
                   to practice                       date

            Inventor B Entitled to Patent

Winning an Interference
                              Actual            U.S.
                 Conception reduction          filing
                            to practice        date
          Commencement of
            Conception                Actual reduction    U.S.
                                        to practice      filing
 Inventor B Entitled to Patent if Commencement of Diligence
is PRIOR to Inventor A’s Conception and CONTINUOUS (no
   unexcused time gaps) until the later reduction to practice

Establishing Date of Invention:
The Laboratory Notebook

 The Laboratory Notebook Should:
  •   Establish Conception of the Invention
  •   Support Reduction to Practice
  •   Demonstrate Diligence
  •   Establish the Basis for Corroboration by a Non-

The Proper Laboratory Notebook
   A Bound Notebook
   Written in Ink
   Does Not Contain Eraser Marks
   Does Not Contain Modifications of Prior Entries
   Has All Pages Numbered

The Proper Laboratory Notebook
 Has No Blank Pages and No Pages Removed
 Printouts, Photos, etc. Permanently Attached to
  Notebook Page
 All Figures and Calculations are Labeled
 All Abbreviations Defined
 Is Indexed by Number, Author and Subject Matter

The Proper Laboratory Notebook
 Contains Outlines of All Experiments
   • Notations to failed experiments are important for diligence
 Detailed Description of Data without Overly
  Speculative Interpretation
 Records Discussion with Collaborators &
 Every Entry is Signed and Dated by Inventor and
   • Witness is a non-inventor who fully comprehends work
   • Without a proper witness to corroborate the asserted
     dates of invention, the priority case will likely fail unless
     there is some other basis of corroboration

Example: Sufficient Corroboration
  • Inventor’s notebook included work performed by
    lab technician and was periodically witnessed by
    co-workers familiar with the inventor’s work.
  • Technician working on behalf of inventor provided
    testimony concerning particular experiments that he
    performed, the data for which was recorded in the
    inventor’s notebook.
       Donohue v. Baudry, 223 USPQ 823, 826-827
       (Bd. Pat. App. & Interfer. 1984)

Example: Sufficient Corroboration
  • Inventor’s notebook was unsigned and unwitnessed, but
    corroborated sufficiently by later documents (record of
    invention and application) containing identical
  • Witness testimony, by a now disinterested party, also
    provided corroboration. Witness had viewed two
    experiments in their entirety.
       Blicharz v. Hays, 496 F.2d 603, 606 (CCPA 1974)

Example: Sufficient Corroboration
  • Inventor notebooks and testimony were provided (but
    not clear whether notebooks were witnessed)
  • Corroboration provided by testimony of an associate
    and independent circumstantial evidence of inventor’s
    withdrawal of supplies to practice the invention, as well
    as by testimony of co-worker who examined a product
    produced by the recited process.
       Lacotte v. Thomas, 758 F.2d 611, 613 (Fed. Cir. 1985)

Example: Insufficient Corroboration
  • Unwitnessed laboratory notebook containing
    experimental evidence performed by technicians
    unaware of what they were testing, provided evidence of
    conception but not actual reduction to practice.
       Singh v. Brake, 222 F.3d 1362, 1370 (Fed. Cir. 2000)

  • Affidavits by non-inventors who merely aver that they
    had read and understood experimental data (provided
    with inventor affidavit) were insufficient.
       Hahn v. Wong, 892 F.2d 1028, 1031 (Fed. Cir. 1989)

What About Electronic Notebooks?
 Electronic Evidence Accepted by USPTO
  • Relevant
  • Authenticated
  • Corroborated
 Authentication Difficult to Prove
  • Data can be easily changed or modified
  • Dates can be modified
  • Electronic signatures can be modified

Electronic Notebooks – Some
• Adopt an Official Laboratory Procedure for Electronic
  Record Keeping
• Generate Hard Copies of all Entries which are
  Signed, Dated and Witnessed and Permanently
  Attach in Bound Notebook
• Use Electronic/Digital Signature Software
• Use Automated Digital Time-Stamp Software
• Use Hardware or Software that Prevents Editing
  Original Research Descriptions
• Use Security Tools to Prevent Unauthorized Access

Is There a Role for Laboratory Notebooks
with Proposed Patent Reform?

 YES!
 Notebooks Are Important For Establishing
   • Correct inventorship is critical to obtaining a valid patent
   • Honest mistakes in inventorship can be corrected, but
     there must be some evidence to support the correction
 Notebooks Will Be Important for Establishing
  Derivation of an Invention
 Basis for Asserting Patent Invalidity in Post-Grant
  Review Proceeding

 “Determining ‘inventorship’ is nothing more than
  determining who conceived the subject matter at
  issue, whether that subject matter is recited in a claim
  in an application or in a count in an interference.”
 Inventorship ≠ authorship
 Joint Inventorship
   • Joint inventors need not physically work together or
     at the same time
   • Joint inventors need not contribute to the same degree
   • Inventive contribution to a single claim is sufficient for joint

Determining Inventorship:
The Role of Notebooks
 A Proper Notebook Should:
   • Identify source, date, and content of instructions or
     ideas of others
   • Identify inventive contribution of yourself and others
 Notebook Can Be Important to:
   • Determine inventorship
   • Correct inventorship
   • Establish ownership (which follows from assignment by
   • Provide a basis for the allocation of royalties

Determining Derivation
 Applicant having later filing date entitled to patent if he can show
  applicant having earlier filing date derived the invention from him
 Derivation Can Be An Issue in Current Interference Proceedings
 Derivation Proceedings are Provided for in the Pending
 To Prove Derivation, the Later-filing Applicant Must Show:
    • Earlier conception of the invention; conception must be
      complete (nothing else to do before reducing it to
    • Communication of the invention to the party who filed
      the earlier application

Thank you

To top