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.

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