Every good invention starts out with an idea, but the answer to the question – can you patent an idea – is a resounding NO! See Can Ideas be Protected? Therefore, in order to obtain a patent and become an inventor it will be necessary to move from idea to patent, which means that travel along the path to invention will take time. As with any lengthy project, keeping notes and tracking progress, success and failures becomes exceptionally important.
In the United States we are still a first to invent country and will remain first to invent up to March 15, 2013. On March 16, 2013, the law changes and the U.S. will become a first to file country, but not exactly like the rest of the world. Inventors will be given an extremely narrow grace period even under the first to file provisions. See USPTO Publishes Proposed First to File Examination Guidelines.
As a first to invent country the party who invents first gets the patent even if they are the second to file a patent application, but this is true if and only if the first to invent has the proof required by the law to demonstrate that they were in fact the first to invent. For many independent inventors and small businesses they simply will never be able to prove they were first to invent because the records they keep are not capable of making the required evidentiary demonstrations.
Even when we switch to first to file inventors will still in some cases need to be able to detail when they conceived of various aspects of their invention if they are going to attempt to rely upon the grace period. Affidavit practice to establish what was invented, when it was invented and that someone else derived their invention or disclosure from you will still be a part of patent practice even after March 16, 2013. Therefore, it is critical now to have an invention record and will similarly be extremely important even after the switch to first to file takes place.
Having (or not having) a good invention record becomes an issue because it is sometimes necessary to prove exactly when you invented, and sometimes it is even necessary to prove when you invented certain aspects of the overall invention. It is not extremely common to need to establish a particular date of invention, but if you fall within situations where it must be done then having proof of when you invented is critical. Not having good, quality, accurate and appropriate proof can be fatal to your attempt to obtain a patent. One excellent resource that helps inventors create a good invention record is The Inventor’s Notebook, which for the price of about $16.50 new is a real bargain.
As with so many things in life, however, there are a number of ways to do it correctly, and any number of ways to do it wrong. Compounding this is the urban myth, propagated by some scam companies over the years, which suggests that sending a description of your invention to yourself through the mail is beneficial to protect your invention. Unfortunately, protecting an invention is not so easy.
Regrettably, those that suggest that mailing a description of your invention to yourself will offer some protection are either simply incorrect or they are well over-blowing what mailing your invention to yourself can accomplish. It is absolutely imperative to understand that mailing a description of your invention provides absolutely no exclusive rights. To the contrary, mailing such a description to yourself and then doing nothing with it could be used against you later on to demonstrate lack of diligence, abandonment or even suppression and concealment, none of which would be good things!
The one thing that mailing a description of your invention can do is demonstrate that as of the date of the postmark you were in possession of whatever is included in the envelope, provided of course you will need to be able to establish that the envelope wasn’t opened, which is not a given at all. In any event, with the US patent system currently being a first to invent system, such a mailing could be at least some useful evidence, provided of course the envelope does have a postmark and provided the envelope is not opened. CAUTION! Do not overestimate the importance of mailing your invention to yourself. It is not bad to do, and in fact can be helpful in a limited number of cases. The main point is to remember, however, is that no exclusive rights attach to or will be derived from such a mailing. If you want a low cost solution to starting the patent process you should really consider a provisional application.
By sending a copy of your notes to yourself all you are doing is creating an invention record, assuming of course that the envelope is not opened and has a postage date stamped. It is, however, possible to open envelopes carefully, so mailing to yourself a description of your invention is not really the most helpful evidence you could have. There are, however, a number of things that you can do to create an appropriate invention record.
The best thing to do as you move through the invention process is to have someone who is familiar with the technology surrounding your invention to verify your invention notes. This happens in corporate America because there are other scientists around. What can do if there is no one handy who works in the field and who can attest to your invention? One thing that is within the ability of everyone is to have a notary notarize your invention notebook or invention record. While you could go to an attorney to do this, virtually every bank has at least one notary present at all times. There may be a small fee, but if you go to your personal bank they might just notarize it for you without charging anything.
The point with respect to getting your invention notes witnessed or notarized is that you want to have someone capable of verifying that they witnessed the documents at a certain date and time. It is best if they can also understand the invention so that there is no question that you added things after the fact. Of course, this is not always possible. When you cannot find someone who understands your invention, whether that person is a friend or a notary, have them initial or sign each page and notarize the entire collection. I would then place the notes into an envelope and have the witness or notary seal the envelope and sign across the seal so that it will be apparent if/when the envelope is opened. Then be sure to keep these invention notes in a safe and secure location.
Keeping an invention notebook or other invention record is an extremely wise thing to do, and in fact should be done by every inventor. How else are you going to know what you did and whether it worked or not? So aside from any legal requirement or advantage received by having an invention record it is just good inventing practice. So you will want to keep a working copy for your reference.
With this in mind it is important to appreciate that an invention notebook is not merely for proving when you invented aspects of your invention, which will rarely if ever be necessary for the overwhelming majority of inventors. An invention notebook or invention record comprised of a collection of notes will be critical for you as you progress down the path of inventing. While we might all like to flatter ourselves with how capable our memories are, you are likely to try so many different things that either fail or succeed to varying levels that days, weeks or months later you will not be able to remember each and every aspect. This can and will lead you to recreate the wheel, so to speak. So keeping a good invention notebook is far more useful for the inventor for personal reference than it is for evidentiary reasons.
Even doing all of the appropriate activities to create and verify your date of invention, all will be useless unless there is enough detail in your notes so that someone (including your) can readily understand what you invented and how to make and use the invention. Nevertheless, what normally happens is inventors will keep detailed notes and then periodically have the entire notebook verified. This is good, but it is important to remember that verifying your invention notebook or record is not a singular act. You should do this periodically throughout the invention process. That is what corporations do, that is what professional inventors do, and that is what you should do as a first time or garage inventor.
Finally, I want to again stress that even keeping an appropriate invention record will do nothing to lead to the creation of exclusive rights. Unlike copyrights, which exist immediately upon creation, a patent exists only upon issuance of a patent, which can only occur after a patent application has been filed. Thus, keeping an invention record does not protect your invention at all — no matter how detailed the invention record is. A well written and thoroughly documented invention record (or invention notebook) gives you proof of what you did when you did it, which may be helpful if and when such proof may become necessary in a patent application proceeding. An invention record also gives you a continuing diary of your trials and tribulations so you can honestly and accurately keep track of what has worked and what has failed. But for exclusive rights to attach you must apply for and ultimately obtain a patent on your invention.
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Editorial Note: This article was first published on the IPWatchdog Blog on October 15, 2010. What appears above has been updated as of July 26, 2012.
Join the Discussion
21 comments so far.
Gene QuinnMarch 1, 2013 04:13 pm
First, what I wrote is not wrong.
Second, the U.S. is not yet first to file. The change occurs effective March 16, 2013.
Third, if an inventor is going to want to try and prove entitlement to the extremely narrow grace period or file a derivation proceeding they are absolutely going to need a comprehensive and detailed inventors notebook. The requirement for proof will be even greater after first to file becomes effective.
Fourth, the fact that you need to rely on a notebook for DATE of conception does not mean that the patent is defective. Nowhere in the patent are you ever supposed to mention date of conception.
It seems that your understanding of patent law is what is wrong.
AshMarch 1, 2013 03:04 pm
This is wrong! In that if you have a poor patent and very good notebook, you are in a bad situation. The patent must be complete without the notebook. Referring back to the notebook is no help. The notebook can not help with the date as it is first to file (no matter when the notebook was written). Use the notebook as a good practice but do not relie on it for the patent process. If you need to use the notebook, something is wrong with your patent application.
Stan E. DeloFebruary 26, 2013 08:49 pm
Great to hear from you again! This is by far the best place to keep up with breaking news that I have found, with frequent posts and comments by extremely knowledgeable patent practitioners from all over the world. To demonstrate my point, this just came in a few hours ago, authored by Gene.
The discussions often get pretty intense but hardly ever personal, which I tend to think is a very good thing. I am certainly very glad that I selected non-publication for my current NPA after a PPA, since I could see the handwriting on the wall with prior efforts at *patent reform*, that finally resulted in the AIA.
The proponents of the bill seemed to be suggesting that there was some sort of *grace period* included, but I have seen very little credible evidence that would support an illusive assertion like that.
Another interesting post here:
I revealed my innocence at comments 9 and 20.
I hope you are doing very well these days, and your efforts to help me in the past will never be forgotten.
All the best-
Andy GibbsFebruary 26, 2013 02:59 pm
Gene (and Stan) –
Indeed PatentCafe’s system would withstand any C.A.F.C. scrutiny, as it was a third party digitally secure document registration system – along the same technology lines as used today for secure digital signatures.
However (and I know I’m posting considerably after this original post), all of this is moot in light of the new First To File System that will be deployed by the USPTO in March 2013.
That being said, there is still absolutely no substitute for developing a diligent patent and business strategy before spending a dime or time on an invention. If there is no CLEAR PATH TO PROFITS, then there’s a 99% chance that all time and money will be wasted.
Remember, a “patent” is not a check you can deposit in the bank. It’s merely one of a great many BUSINESS TOOLS that help create, retain and exploit market share for a product or service.
Keep up the great work, Gene!!!!
Stan E. DeloAugust 4, 2012 03:40 am
I believe the Patent Cafe methodology would survive a FBI scrutiny. Please don’t worry too much about what I might do.
step backAugust 4, 2012 03:19 am
Stan, Like I said, I am **not** giving any valid legal advice above. If you have a specific method in mind, talk it out with your local patent attorney. You need third party corroboration since the inventor is presumed to be a liar and a cheat. A camera whose date you can reset on your own simply won’t do the trick. Try google searching a query like this one: “file timestamp services”.
Stan E. DeloAugust 3, 2012 09:59 pm
An excellent suggestion, which hadn’t really occured to me until you mentioned it. My trusty old Olympus digital camera automatically date stamps all my pictures, but I just have the *display* of the date on the pictures turned off to keep the pictures pristine. A digital smart phone might allow you to *edit* the time and date, but it will probably never *forget* the real time and date despite your best efforts to make it forget.
There is also another option that Andy Gibbs of the Patent Cafe was developing about 12 years ago, that used a sort of digitally secure Verisign type of technology, if I recall it correctly. A picture of the book or the actual device next to the latest issue of the New York Times would seem to be pretty conclusive evidence to me, as it could easily be looked up, and it would seem be impossible for anyone to try guess what future headlines might appear there, unless they were able to go Back to the Future, so to speak. That is basically what I have been doing, with an extensive series of pictures of developments that are automatically arranged in chronological order.
I wonder what a Fed Circuit judge would make of that?
step backAugust 3, 2012 02:50 pm
Don’t forget your iPhone/ other-SmartPhone as an option!
Today’s smartphones (iPhone, Android, etc) include pretty good digital cameras and software for managing pictures taken with the same.
Accordingly you can quickly & conveniently snap pictures of your hand-scribed lab book and/or your experimental set ups.
When you take a picture, you might want to consider including in the background, a copy of that day’s newspaper front page. It may not be as good as a live witness, but it is additional evidence of the likely date on which the photograph was taken. I suspect that there are many date-stamping services out there for computer files and you can get your photo files date stamped that way.
(Disclaimer: this is not legal advice to anyone out there. Check with your attorney about the latest state of the law regarding such hi tech options.)
JMAugust 2, 2012 04:23 pm
I did a quick search of e-lab book review and found an interesing review dated Feb 2011 so not too out of date. I’ll read through and let you know what I find out.
MaxDreiAugust 2, 2012 08:40 am
This Link takes you to a 44 page pdf that walks you through drafting and filing a utility patent application in the UK. I thought it might give you some ideas what to write and what to draw, in your Lab Book.
MaxDreiAugust 2, 2012 05:34 am
Hey guys, tell me about Lab Books of inventors inside Big Corp. Are they not these days 100% electronic. Every night a secure retrievable 100% back-up.
So, in litigation, when the lawyers want a “Date of Conception”, what happens? Scroll through and develop a story that stuffs little independent David Inventor?
Might Little David then, just possibly, be better off with First to File. How long does it take, before Big Corp gets round to filing at the PTO. When David has an earlier filing date, it is David, not Big Corp, who is wearing the big Kicking Boots, in the driving seat, and Big Corp has the burden of knocking David out of the driving seat.
At least, that’s how it pans out in Europe.
Stan E. DeloAugust 1, 2012 09:43 pm
I can certainly understand what you are saying about asking friends to witness your journal very frequently. I have had some get nervous about signing something like that, especially if they don’t understand what it is all about. I have one very good friend though, who was very happy to sign, and he is a very clever fellow who has lots of technical savvy in many fields, but during one episode early in my wind turbine development process I would have needed to bug him about once a week, which seemed overly diligent, and perhaps annoying for my friend because he was a very busy guy at the time. As it turned out, I ended up throwing 8/10’s of the concepts over my shoulder anyways as being impractical, and/or too expensive to manufacture, but I didn’t know that at the time.
In my case I ended up using a Notary Public (NR) quite a bit later on as Gene mentions in this article, but there is a caveat going that route to be aware of. For instance, my friend Neil was always careful be sure he understood what I was proposing before he signed, but for legal reasons, most NR’s don’t really want to know what is in the document, even if they were capable of understanding the technology. They are just *testifying” that you were the one possessing and presenting them the document on a particular date, whereupon they will emboss the document with their seal, and sign the document after positively verifying your identity. If it ever goes to court, they will be useless as witnesses about the invention, where a friend, or even more positively, a patent agent or attorney could really save your bacon some day. Even at that, we are only talking about 2% of all cases where it will even ever be needed.
JMAugust 1, 2012 05:12 pm
Thanks Max, the date of conception thing is sometimes hard to tease out, not to mention if you have joint inventors to the mix. Basically, one has to figure out the date for each claim in the patent. Even then it still can be fuzzy. Also, there is problem of the witness. Usually I don’t go and bug someone for a signature for every little improvement in the invention, just all at once every once in a while. Thus there is a discrepancy between the date of concept and a witness acknowledgement.
Stan E. DeloAugust 1, 2012 12:00 am
Actually it wasn’t the USPTO that had the idea for the new rules. It was mandated by Congress in the America Invents Act, and their ten year statute of limitations for patent attorneys is arguably pretty insane to my way of thinking. For instance, do you think you could remember all of the details of the alleged misconduct some 8 years after the fact? Of course the inventor most likely will, but patent attorneys sometimes prosecute dozens of patent applications per year, for people they have never met in person.
A pro se Provisional application will probably be pretty much useless, or even worse, perhaps severely limiting of your possible patent rights in the future unless you have gotten really good at it. I happen to be an independent inventor myself, and am not formerly trained in US patent law. Some of my best friends are patent agents and attorneys, though, and they are arguably the best form of attorneys there are, as they do positive things, instead of chasing ambulances to bust the *bad guys* that they think owe you money or something.
To each their own opinion, but you seem to be unnecessarily paranoid to me.
Stan E. Delo
Aero Marine Co.
Port Townsend, WA
GerardJuly 31, 2012 04:40 pm
Today’ announcement of amended 32 U.S.C.35 justifies an inventor’s mistrust.. The fact that the USPTO needs the extension of time to discipline patent attorneys makes it obvious there is a problem of ethics. (That and knowing a patent attorney had indeed stolen an inventor’s concept as the trusting inventor was soliciting that attorney’s services. It happened years before there were provisional patent applications.) Until I see a halo above an attorney’s head, my trust will not be assumed, it will be earned— or at least protected by a self-filed provisional application or NDA.
MaxDreiJuly 31, 2012 03:09 am
Interesting post from Inventor JM who reports that he himself has no idea what would have been the “date of conception” of his baby invention. JM, don’t worry about that, because the lawyers will take care of all that stuff for you. In the end (after perhaps 20 years) if there is enough money in the invention to fund their activities, they will come back to you to tell you the date. Then you’ll feel better.
There might be very few full-blown interferences but I can assure you that it happens ever more frequently, that different inventors, independent of each other, apply to the PTO, at around the same time, for protection of subject matter that overlaps. So, even though multi-nationals are good at mutual patent pooling and mutual “live and let live” agreements, there is nevertheless a growing need to adjudicate quickly, fairly and cheaply between rival inventor/appicants, who gets what.
JMJuly 30, 2012 05:26 pm
Also to add to the discussion, in my inventive process I find it difficult to nail down the actual date of invention. I find parts and improvements are scattered across a timeline. As per the law, date of invention is conception. But of course, my lab notebook represents 99% R-to-P part of the process which could help in case of interference to ensure I did my diligence “all the way to R-to-P date.” Although from a pure numbers game, the actual chances of being in an interference proceeding would be akin to getting struck by lightning.
Anyways, the way work is done nowadays (on computers), makes maintaining a paper labbook somewhat of a chore, especially for the new digital “look Ma, no paper” whipper-snappers out there. Do you recommend the use of “electronic lab notebooks” I’ve been looking into them but haven’t seriously yet. Anyways, thanks for the info.
patent litigationJuly 29, 2012 02:58 pm
These are very helpful tips, for both budding and experienced inventors.
Stan E. DeloJuly 29, 2012 01:33 pm
While your habits are admirable, when a Patent attorney or agent is faced with an inventor that wants them to sign a NDA, you will most likely never hear from them again. They have already taken an oath that they will keep all of your information confidential, and if they fail in that regard, they could very well lose their registration certification to be able to present their clients’ inventions to the USPTO. At some point, you will have to trust someone. If an attorney violates that trust, they could very easily lose their license to practice patent law, which would seem to be very foolish to me.
Do you know about InventNet? I don’t seem to recall your name from there.
GerardJuly 29, 2012 01:03 pm
From the article: “It is best if they can also understand the invention so that there is no question that you added things after the fact.”
As an inventor, I never disclose my notes to ANYONE who is not participating in the conception, including notaries, attorneys, etc., without executing a non-disclosure agreement which specifically identifies the nature and purpose of the disclosure. Sad to say, there are unethical humans out there. And last time I checked, notaries and patent attorneys are still classified as human. ; -)
Otherwise… another good article.
Stan E. DeloJuly 29, 2012 07:38 am
Excellent educational article for independents to consider. Do you mind if I post a link to it on InventNet? As a patent agent friend of mine, George Morgan, once wrote in essence; “If an inventor is clever enough to invent a (quantum time avoidance device) why would a judge believe they weren’t smart enough steam an envelope open and change the contents?”