INFOTECH AND THE LAW

Last issue we looked at procedures for maintaining rights in technology, and some of the reasons for keeping detailed records of R&ampD. This issue we will examine competing claimants to an invention, and the nature of the records that should be kept.

Sometimes more than one inventor develops the same invention independently. In such a case, only the first to have "made" the invention is entitled to the patent, unless he or she abandoned, suppressed or concealed the invention.

Last issue we looked at procedures for maintaining rights in technology, and some of the reasons for keeping detailed records of R&ampD. This issue we will examine competing claimants to an invention, and the nature of the records that should be kept.

If only the second party to "make" the invention files an application that's ultimately issued as a patent, and that patent is asserted against the first to have made the invention, "prior development" is a defense against the charge of infringement (assuming the technology was not maintained as a trade secret). If both parties file patent applications, the relative priority of the inventors is determined by an "interference" proceeding conducted by the Patent and Trademark Office.

"Making" an invention, as that term is used in the patent statute (and is typically used in the agreements mentioned in the last issue), is a two-step process: Conceiving the invention (technology); then reducing the invention to practice.

Conception is the mental portion of invention. Reducing the invention to practice is building the invention and proving that it works for its intended purpose. The filing of a patent application is considered to be a constructive reduction to practice.

The diligence with which the company works to reduce the technology to practice after the technology has been conceived can also be a factor. If inventor A was both the first to conceive and the first to reduce the invention to practice, inventor A is the first to have "made" the invention.

However, if inventor A is the first to conceive the invention, but inventor B is the first to reduce the invention to practice, inventor B will be deemed first to have made the invention, unless inventor A can prove that he or she was reasonably diligent in pursuing the reduction to practice from prior to inventor B's conception of the invention.

As a general proposition, each aspect of the process of making an invention must be proven by more than just the word of the inventor; the word of the inventor (or co-inventors) about when and where an invention was conceived or reduced to practice is essentially worthless without corroboration. Corroboration can be dated documents, drawings, write-once media such as optical disk, time records and oral testimony by non-inventors.

Invention disclosure forms are often used to memorialize developments. Disclosure forms are designed to elicit a complete description of an invention, and to identify anything that might be relevant to the issue of patentability, such as possible public uses or offers for sale.

The invention disclosure form, when completed, should be signed and dated by the inventors and signed and dated) by a non-inventor.

As a practical matter, however, invention disclosure forms typically do not contain the detail necessary to prove actual reduction to practice of an invention or "diligence."

For this reason, detailed contemporaneous laboratory notebooks should be maintained. All computations, circuit diagrams, test results, etc., should be contemporaneously entered into the notebook.

It is as easy to do calculations, etc., in the notebook as on scratch paper. So long as the entry is legible (and contains sufficient detail), there are no particular format or neatness requirements.

It is, however, imperative that each notebook entry identify the subject of the work with particularity and contain all relevant details. An entry such as "work on new guidance system" sheds little light on whether the "new guidance system" included a specific feature on a particular date.

All persons involved in the work should also be identified in the corresponding notebook entries. Unless participants are identified, it is often difficult to establish, long after the fact, those involved in particular activities.

Records should contemplate proving not only the dates of conception and reduction to practice, but also diligence in between. To this end, it is desirable that the documentary evidence and, in particular, dated notebook entries should describe all testing performed, the particular types of equipment used, and the results of the testing, both good and bad.

Every entry should be signed and dated, indicate the particular project with which the entry is associated, and, if possible, be signed and dated by a witness.

The evidentiary value of an entry in a lab notebook is directly proportional to the specificity of the entry and the care taken to date and sign each entry and have each entry witnessed.

However, the context of the entry in an engineering notebook can sometimes be used to prove a date.

For example, if an entry showing conception is found in a bound notebook, between entries dated Jan. 3 and Jan. 5, it is relevant proof that the invention was conceived sometime between these dates. It would not be so relevant, however, if a loose-leaf engineering notebook had been used.

Time records can also be relevant evidence of when developments were made, however separate project numbers must be assigned to specific, relatively narrowly defined tasks.

In all, a documentary record should be maintained capable of establishing the dates and activities comprising each of the elements of "making" an invention, identifying individuals involved in the work who can provide testimonial proof, and identifying the particular project with which technical work is associated.

Michael A. Lechter, a member of the international law firm of Squire, Sanders &amp Dempsey in Phoenix, Ariz., has specialized in intellectual property law for more than 20 years. He can be reached via E-mail at 04820@cle00.ssd.com


NEXT STORY: Mover

X
This website uses cookies to enhance user experience and to analyze performance and traffic on our website. We also share information about your use of our site with our social media, advertising and analytics partners. Learn More / Do Not Sell My Personal Information
Accept Cookies
X
Cookie Preferences Cookie List

Do Not Sell My Personal Information

When you visit our website, we store cookies on your browser to collect information. The information collected might relate to you, your preferences or your device, and is mostly used to make the site work as you expect it to and to provide a more personalized web experience. However, you can choose not to allow certain types of cookies, which may impact your experience of the site and the services we are able to offer. Click on the different category headings to find out more and change our default settings according to your preference. You cannot opt-out of our First Party Strictly Necessary Cookies as they are deployed in order to ensure the proper functioning of our website (such as prompting the cookie banner and remembering your settings, to log into your account, to redirect you when you log out, etc.). For more information about the First and Third Party Cookies used please follow this link.

Allow All Cookies

Manage Consent Preferences

Strictly Necessary Cookies - Always Active

We do not allow you to opt-out of our certain cookies, as they are necessary to ensure the proper functioning of our website (such as prompting our cookie banner and remembering your privacy choices) and/or to monitor site performance. These cookies are not used in a way that constitutes a “sale” of your data under the CCPA. You can set your browser to block or alert you about these cookies, but some parts of the site will not work as intended if you do so. You can usually find these settings in the Options or Preferences menu of your browser. Visit www.allaboutcookies.org to learn more.

Sale of Personal Data, Targeting & Social Media Cookies

Under the California Consumer Privacy Act, you have the right to opt-out of the sale of your personal information to third parties. These cookies collect information for analytics and to personalize your experience with targeted ads. You may exercise your right to opt out of the sale of personal information by using this toggle switch. If you opt out we will not be able to offer you personalised ads and will not hand over your personal information to any third parties. Additionally, you may contact our legal department for further clarification about your rights as a California consumer by using this Exercise My Rights link

If you have enabled privacy controls on your browser (such as a plugin), we have to take that as a valid request to opt-out. Therefore we would not be able to track your activity through the web. This may affect our ability to personalize ads according to your preferences.

Targeting cookies may be set through our site by our advertising partners. They may be used by those companies to build a profile of your interests and show you relevant adverts on other sites. They do not store directly personal information, but are based on uniquely identifying your browser and internet device. If you do not allow these cookies, you will experience less targeted advertising.

Social media cookies are set by a range of social media services that we have added to the site to enable you to share our content with your friends and networks. They are capable of tracking your browser across other sites and building up a profile of your interests. This may impact the content and messages you see on other websites you visit. If you do not allow these cookies you may not be able to use or see these sharing tools.

If you want to opt out of all of our lead reports and lists, please submit a privacy request at our Do Not Sell page.

Save Settings
Cookie Preferences Cookie List

Cookie List

A cookie is a small piece of data (text file) that a website – when visited by a user – asks your browser to store on your device in order to remember information about you, such as your language preference or login information. Those cookies are set by us and called first-party cookies. We also use third-party cookies – which are cookies from a domain different than the domain of the website you are visiting – for our advertising and marketing efforts. More specifically, we use cookies and other tracking technologies for the following purposes:

Strictly Necessary Cookies

We do not allow you to opt-out of our certain cookies, as they are necessary to ensure the proper functioning of our website (such as prompting our cookie banner and remembering your privacy choices) and/or to monitor site performance. These cookies are not used in a way that constitutes a “sale” of your data under the CCPA. You can set your browser to block or alert you about these cookies, but some parts of the site will not work as intended if you do so. You can usually find these settings in the Options or Preferences menu of your browser. Visit www.allaboutcookies.org to learn more.

Functional Cookies

We do not allow you to opt-out of our certain cookies, as they are necessary to ensure the proper functioning of our website (such as prompting our cookie banner and remembering your privacy choices) and/or to monitor site performance. These cookies are not used in a way that constitutes a “sale” of your data under the CCPA. You can set your browser to block or alert you about these cookies, but some parts of the site will not work as intended if you do so. You can usually find these settings in the Options or Preferences menu of your browser. Visit www.allaboutcookies.org to learn more.

Performance Cookies

We do not allow you to opt-out of our certain cookies, as they are necessary to ensure the proper functioning of our website (such as prompting our cookie banner and remembering your privacy choices) and/or to monitor site performance. These cookies are not used in a way that constitutes a “sale” of your data under the CCPA. You can set your browser to block or alert you about these cookies, but some parts of the site will not work as intended if you do so. You can usually find these settings in the Options or Preferences menu of your browser. Visit www.allaboutcookies.org to learn more.

Sale of Personal Data

We also use cookies to personalize your experience on our websites, including by determining the most relevant content and advertisements to show you, and to monitor site traffic and performance, so that we may improve our websites and your experience. You may opt out of our use of such cookies (and the associated “sale” of your Personal Information) by using this toggle switch. You will still see some advertising, regardless of your selection. Because we do not track you across different devices, browsers and GEMG properties, your selection will take effect only on this browser, this device and this website.

Social Media Cookies

We also use cookies to personalize your experience on our websites, including by determining the most relevant content and advertisements to show you, and to monitor site traffic and performance, so that we may improve our websites and your experience. You may opt out of our use of such cookies (and the associated “sale” of your Personal Information) by using this toggle switch. You will still see some advertising, regardless of your selection. Because we do not track you across different devices, browsers and GEMG properties, your selection will take effect only on this browser, this device and this website.

Targeting Cookies

We also use cookies to personalize your experience on our websites, including by determining the most relevant content and advertisements to show you, and to monitor site traffic and performance, so that we may improve our websites and your experience. You may opt out of our use of such cookies (and the associated “sale” of your Personal Information) by using this toggle switch. You will still see some advertising, regardless of your selection. Because we do not track you across different devices, browsers and GEMG properties, your selection will take effect only on this browser, this device and this website.