United States: Protecting Your Date Of Invention

Imagine you’ve made a new invention which will revolutionize your industry and make you a ton of money in the process. You’re the first to come up with the idea for the invention and the first to build the invention and prove it works. You’re also the first to file a patent application for the invention. Now imagine not only that you lose the patent rights to your invention to a competitor who made the same invention AFTER you did and filed a LATER patent application, but also that your competitor is successful in preventing YOU from marketing your own invention! This is exactly what can happen if you don’t take steps to protect your date of invention.

Whereas virtually all other countries award priority for a patent based upon which inventor is the first to get a patent application on file, the United States patent system awards the "first to invent," rather than the first to file. However the right of an earlier inventor to obtain a patent over a subsequent inventor depends on the first inventor’s ability to PROVE he was the first inventor. Failure to be able to prove that you are the first inventor can thus result in loss of patent rights and can even result in your being precluded from the market by another inventor who IS able prove his date of invention and thus obtain a patent.

"Invention" is a two-step process. First there is the "conception," that is, the mental formulation of the invention—"coming up with the idea." Reduction to practice is the process of constructing and using your invention and proving it useful for its intended purpose. Further, To prove your date of invention you must be able to prove not only the date you conceived of your invention but also the dates of your activities in reducing your invention to practice.

An early date of invention and diligence in reducing your invention to practice are only helpful if you can PROVE them. So what can you do to document your invention process to enable you to prove your conception and reduction to practice? Below are some procedures you can follow to make sure you can prove your date of invention.

A conception and reduction to practice must be established by corroborated evidence, that is, evidence which can be confirmed by persons other than the inventors. Uncorroborated evidence of the inventors is legally insufficient to establish conception or reduction to practice. Thus it is imperative that the inventor’s ideas and efforts to reduce those ideas to practice be disclosed to someone on a regular basis who can corroborate the inventor’s testimony. Further, the third party must be able to corroborate the inventor’s testimony by reference to particular dates to provide the best possible protection for a date of invention. There are two basic ways to corroborate a date of invention. With regard to evidence maintained in the custody and control of the inventor, a third party must be able to corroborate events, documents, and other evidence of conception and reduction to practice, based upon the third party’s own observations and understanding of the evidence. In the alternative, evidence of conception and reduction to practice can be delivered to a party other than the inventor, who maintains exclusive control of the evidence. The third party can corroborate the evidence as of the date it was received, irrespective of whether he reviewed or understood the contents of the evidence, on the theory that the inventor could not have had access to the evidence to alter it after the third party took custody of it.

Perhaps the most common way to record and to corroborate acts of conception and reduction to practice is the so-called "inventor’s notebook" or "lab notebook." The inventor should record his ideas and the efforts made to reduce his ideas to practice in the inventor’s notebook. Then periodically, preferably at least weekly, the inventor should have another person (not a co-inventor!) review his notebook entries and then sign and date each page. Each page should be witnessed along the lines of the following: "Read and understood, John Doe, November 8, 1998." It is important that the person witnessing the inventor’s notebook have a level of skill sufficient to enable him to understand what he is reading. A witness who signs and dates a notebook page without understanding its contents and then returns the notebook to the inventor will not be able to testify later that changes or additions have not been made since the date of his review of the notebook.

Aside from the inventor’s notebook, business records can also be helpful in establishing diligence and reducing an invention to practice. For example, periodic reports made to supervisors or requisitions for materials used in reducing the invention to practice can be used to help establish the inventor’s activity.

It is NOT advisable to try to establish a date of invention by the fairly widespread practice of mailing one’s self a certified letter disclosing the invention. Such evidence is inherently untrustworthy for a number of reasons. First, it is possible to mail one’s self an empty envelope and add notes to the date-stamped envelope years later. Second, envelopes can usually be opened, the contents replaced or modified, and the envelope resealed without any evidence of tampering. Third, because the inventor retains possession not only of the envelope but also of the return receipt, there is no evidence from a third party which can corroborate the inventor’s testimony.

The practice of having a document notarized also will not corroborate a date of invention. The notary can establish only that the inventor signed the document on a given date and cannot testify as to the contents of the document being signed.

By now it will be apparent that individual inventors are at a distinct disadvantage, in the sense that often they may not have co-workers with the necessary level of skill readily available to sign and witness the inventor’s notebook. In an effort to help address this problem, the Patent Office has made available to the public a "disclosure document program." For a fairly nominal fee, an inventor can file a written description of his invention with the Patent Office, who will date-stamp the document and keep it on file for a period of up to two years. If a patent application is filed within that two year period, the disclosure document can be moved to the patent application file, where it will become a part of the Patent Office’s permanent file for that application. Should the inventor’s date of invention ever be called into question, the inventor will have a date-stamped document on file at the Patent Office upon which he can rely to establish a date of conception as of the date the document was filed in the Patent Office.

Note that the disclosure document program cannot help an inventor establish reduction to practice or diligence in reducing the invention to practice, nor can it be used to establish a date of invention any earlier than the date the disclosure document is actually filed with the Patent Office. Further, if a patent application is not filed within two years, the disclosure document will be destroyed by the Patent Office.

The date of invention is the earliest date which can be corroborated by independent evidence. It is important to note that the effective date of a document for establishing conception or reduction to practice is the date it can be corroborated. For example, an entry in an inventor’s notebook dated March 1 which is not corroborated until March 31 will prove only the March 31 date; the March 1 date of entry by the inventor is not retroactively corroborated by someone who reviews the notebook entry weeks later.

Each engineer or researcher should have a bound, numbered volume in which all notes, calculations, or other conceptual work is done in ink. Using a bound volume eliminates the possibility that pages can be removed and replaced. Using a volume where all pages are pre-numbered would make it immediately evident if an inventor were to try to go back and insert a page after the fact. Making the entries in ink eliminates the argument that the inventor might have erased and changed information in the notebook.

Entries in the Inventor’s Notebook should be made contemporaneously. The inventor should not rely on memory and should not make notes on a loose sheet of paper with the intent to transcribe the notes into the Inventor’s Notebook later. Do not go back and add material later. Instead, make a separate entry and cross-reference the original entry, if needed. The inventor should completely fill each page of the notebook. A diagonal line should be drawn through any blank space to show it is intentionally left blank.

Do not strike through, erase, or obliterate any entries. If you make a mistake, identify it and explain it. Make sure your notebook is legible and understandable. If you use abbreviations, make sure that they are commonly understood abbreviations or, in the alternative, explain at least once in each notebook what each abbreviation means. Identify the units used in measurements, e.g., °F or °C.

Enter results of unfavorable tests as well as favorable tests. Failed efforts can actually be evidence of nonobviousness of the invention. When a notebook is full, it should be delivered to a custodian for safekeeping, and the inventor should start a new notebook.

More researchers and engineers are relying on computers to create and store their inventive work product. Computer aided design, engineering, and manufacturing (CAD/CAE/CAM) systems, groupware such as Lotus Notes, computer-based calendars, and other computer productivity tools are commonplace in present-day engineering environments. However, the need remains for adequate record-keeping procedures to protect inventions that come out of these computer-based development environments.

The question often arises whether creation and modification dates appended to a computer file by operating system software can be used to establish the dates of conception and reduction to practice. It is well known that the dates on computer files are inherently unreliable. It is relatively easy to change the system date and time on a computer such that the creation and modification dates are not accurate. Additionally, by editing information in the file’s header, it is possible to change the modification and creation dates of the computer file after the fact.

There are several ways in which computer files can be preserved and corroborated. First, the contents of the file can be printed out, and the printout dated and signed as "witnessed and understood" by a third party. This is similar to the traditional method of preserving evidence, and most likely to survive close scrutiny in a court. However, for large files it is tedious and defeats the purpose of the "paperless" working environment.

As an alternative, a disk containing the file can be delivered into the custody of a third party custodian. In this manner, the inventor cannot later access the computer file to modify it. Trustworthiness of the evidence can be further enhanced if the file is burned onto an unalterable medium such as a CD-ROM. The party taking possession of the disk should date and sign the label of the disk or, in the case of a CD-ROM, can put the date and signature directly on the disk itself.

As with other types of documentation, the date of invention established by delivering a computer file into the custody of a third party is the date that the disk is actually delivered to the custodian, and not any date on the computer file itself.

Although few of these methods have been tested in the courts, careful consideration should be given to developing acceptable methods for preserving evidence of invention conception and corroboration in computer-based research and development environments.