America has finally
joined the rest of the world and shifted from a ‘First to invent ’ system to a
‘First to file’ one. Now all I’m waiting for is for the Metric system to come
kicking in the door; 12 inches in a foot, 5,260 feet in a mile. Seriously! Thankfully
I didn’t have to study math in America, word problems would have been the death
of me. But I digress; under the new America Invents Act passed in 2011 a number
of sweeping changes have been made to Patent law . Amongst these amendments
probably the most noteworthy is the change to a ‘First to file’ system. The
name may seem slightly misleading as it really means the first inventor to
file. The law now favors the inventor
who files for a patent and reduces his invention to practice first over the
inventor who first came up with the idea for the invention (if separate
claimants).
You may be thinking
that if the law doesn’t care about who conceived of an invention first then
maintaining documentation to prove the same, such as an Inventor’s notebook,
has in effect, become impractical. Even though this line of reasoning seems
intuitive at first, it is a superficial assessment of the change. An inventor’s
notebook does more than just establish who came up with the idea for an
invention first. Reduction to practice is equally, if not more, important. By
constantly updating your notebook you establish that you have in fact been
working actively to reduce your invention to practice. A major factor
considered while granting patent rights.
What is an
inventor’s notebook? Yes, it is basically just a book to jot down your ideas,
diagrams and progress on a particular or number of inventions in. Before
sarcastically thanking me for stating the obvious, there are a number of rules
you should know that, if overlooked, may ruin the credibility of your notebook
and make it inadmissible as evidence in court. For example the notebook must
have a fixed number of pages, each numbered. Loose leaf binders or stapling
pages later on are not allowed. You should not tear or erase any material. Do
not make any alterations or leave empty spaces; making any changes after a
witness has already signed nullifies the credibility of the entry. There should
be space for a witness to sign at the bottom of each page. Also all
supplemental material such as graphs and diagrams must be inserted permanently
with glue. It is good practice to maintain a record of a single invention in a
notebook as it easier for courts to establish a timeline without getting
confused.
One of the main
reasons patent applications are rejected are because they lack novelty based on
a current reading of prior art of the relevant field. Technology is advancing
at an exponential rate. No really, it is. Those are not just sugary words but
fact backed by verifiable data. People familiar with Moore’s Law and its many derivations will attest to this rate of growth in the
field of electronic technology. Even though it is slowing down, the amount of
knowledge being created in each and every field day after day is mind boggling.
The reason I bring this up is because an idea one believes is novel today may
just as well lack novelty in a matter of months or alternatively a person can
challenge a patent application on the grounds that there is a reference to
existing prior art that the applicant failed to mention at time of filing.
Proving beyond doubt, that you had in fact come up with an idea before it was
referenced in prior art becomes imperative.
But don’t relax just
yet, conception predating prior art is advantageous, no doubt, but in and of
itself not enough. You have to show that you were actively reducing the
invention to practice since conception. This is where recording all your
updates come into the picture. Courts do not rely on your oral testimony when
verifying the truth. You could be George Washington incarnate; the court would
still need evidentiary proof apart from your word. Inventor’s notebooks are
verified by experienced witnesses in the field and lend it authenticity.
Protecting your
invention is not the only advantage of maintaining an inventor’s notebook. You
can also use it to document research and development. This not only protects
your R&D, but also keeps a time-stamped record of all research activities.
Making it easier to identify trade secrets your company possesses while also
providing proof in case of any derivation proceedings. Another benefit of
documenting R&D is that in case an entrepreneur of a company spends a
substantial amount of time in the research facilities, he can seek a research
tax credit. But without supporting documentation keeping track of the hours
spent in research, no claim can be made.
I won’t lie though,
maintaining a number of inventor’s notebooks and following the stipulated rules
can be bothersome. Not to mention having to get everything verified by a
witness time and again. An easy alternative is Traklight’s IP Vault®. It stores
all your documentation online, secure and time stamped. All your uploaded files
are inherently verified by Traklight®. Another advantage is that since
everything is stored on a cloud you can retrieve your data on the fly wherever
you are. Not only for the technologically savvy, online storage of sensitive
data reduces the hassle of protecting intellectual property for anyone.
Irrespective of what mode you prefer, maintaining a log of every stage of your
invention is a must and should not be ignored.
This article is
intended to be general information and nothing in this article constitutes
legal advice. Please consult with an attorney before making any intellectual
property decisions.
[1] It is
based on an observation made by Intel co-founder Gordon Moore, who stated that
the number of transistors and integrated circuits would double every 2 years. This
rate is predicted to slow down by 2015.
[1] The
rate of development of other electronic technology is also strongly linked to
Moore’s Law. For example, pixels in cameras, memory in computing devices and
processor speeds.
[1] Basim Shami ,et al v. Commissioner (T.C. Memo. 2012-78)
