Every invention starts out with an idea, but you cannot patent something that is merely an idea. In order to obtain a patent, the idea must mature into an invention. Think of it as crossing over the idea-invention boundary, if you like. Start with a general idea and then build upon that idea by layering specifics and nuances as you move from idea to invention. Eventually you will have more than a mere idea and enough tangible and concrete that it will be worthwhile to inquire about obtaining a patent, perhaps by beginning the process with a patent search.
Inventors that want to be successful need to pursue inventing with a level of seriousness that goes beyond just tinkering in the garage. Sure, like every idea starting with an invention every invention starting with some tinkering and toiling is a given. But if you are not going to keep track of your efforts it will be extremely difficult to know what you did that worked, and just as importantly what you did that did not work.
Once upon a time, inventors needed to keep a good invention notebook in order to demonstrate the date they conceived of an invention, or aspects of an invention. This was necessary when the United States patent laws were first to invent. Since March 16, 2013, however, U.S. patent laws have become first inventor to file, so there really is a race to the Patent Office.
Truthfully, it is a slight exaggeration to say that first inventor to file laws create a true race to the Patent Office, but the real-world scenarios where one could file a patent application second and prevail under first inventor to file laws are going to be rare. It has always been good advice to file as quickly after conception (i.e., inventing) as possible, but today it is really imperative. First to file must be interpreted as meaning file first! Allowing delay between invention and filing a patent application can be a disaster, which is why provisional patent applications have become even more popular and more important than they were before.
Still, regardless of whether a notebook will be necessary to demonstrate contemporaneous proof of possession of an invention as of some particular date, in order to obtain a patent and become an inventor it will be necessary to transition from where you first have the idea to some tangible manifestation that describes the structure of the invention with instruction manual level detail. This means the 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.
Keeping an invention notebook or other invention record is an extremely wise thing to do, and in fact should be done by every inventor. 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 less reputable 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 uninformed. It is absolutely imperative to understand that mailing a description of your invention provides no exclusive rights. To the contrary, mailing such a description to yourself and then doing nothing with it can be used against you later to demonstrate you are no longer entitled to a patent.
It is incorrect to say that it no longer matters under first inventor to file rules and law when someone actually invented. Having said that, the time when it does matter is so rare and uncommon that inventors really should operate under the assumption that it no longer matters when an invention has been conceived under a first inventor to file regime. In the very rare case where it may be necessary later to demonstrate possession of an invention as of a certain date, because someone stole your invention and beat you to the Patent Office, having mailed the invention to yourself likely won’t be particularly helpful. What scientists and engineers do in the corporate setting is they have other scientists and engineers who understand the technology and science witness (i.e., sign and date) their invention notebook periodically. For individual, independent inventors who don’t have access to someone technically competent to witness their invention notebook, getting notes notarized would be far better solution than mailing them to yourself. Of course, this is not the best course of action – not by a long-shot!
The best thing to do would be to have filed a patent application first — at least a provisional patent application. There would be no need to have anything witnessed or notarized because you would have an official filing date from the United States Patent and Trademark Office.
But if you want to do everything perfectly proper, and guard against even the rare chance that someone might steal your invention and beat you to the Patent Office, as remote a possibility as that may be, having an invention notebook is critical, and having those notes witnessed or notarized is necessary. The point is you want to have someone capable of verifying they witnessed the documents at a certain date and time.
It is worth remembering, however, that an invention notebook is not just for proving when you invented aspects of your invention, which will rarely if ever be necessary for the overwhelming majority of inventors now that the U.S. follows first inventor to file laws. An invention notebook or invention record is comprised of a collection of notes that will be critical for you as you progress down the invention path. 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 every aspect of your efforts. This can and will lead to a need to recreate the wheel. So, keeping a good invention notebook is far more useful as a 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 for naught unless there is enough detail in your notes so that someone (including you) 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 independent inventor.
Finally, although not previously mentioned, please remember that any time you share information about your invention you should have a confidentiality agreement. The only time a confidentiality agreement is not necessary is when you are speaking with a patent attorney or patent agent. All patent practitioners are already legally required to keep any information they learn confidential.
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5 comments so far.
Roxanne AndrieuxJanuary 8, 2019 02:33 pm
Best enhancement to this is registration of e-notebook to the blockchain, thus providing immutable and irrefutable proof of owner, date, witness, and evolution of ideas. In 2018, courts began to examine blockchain hash for proof in civil proceedings for intellectual property matters.
Dan HansonJanuary 7, 2019 11:59 am
Notebooks have other benefits. In some companies, inventors submit their potentially patentable concepts electronically. Having a notebook can help an inventor submit the information that the submission software calls for. Some inventors put drawings in the notebook, or computations, or practical considerations that can be very useful to the drafter of a patent application. It is also fairly common for an inventor’s notebook to include mention of variations and alternatives, while the electronic submission will make mention only of the best mode; so the notebook can help the patent application drafter call out additional variations and embodiments for inclusion in the application.
Sten Gerfast January 6 2019January 6, 2019 04:06 pm
Dear Gene:Yes, a daily notebook is very important,especially in Appl.14/544,670
wherein the Examiner is REWRITING the applicants Claims!,…to be non-functional and inoperative (is this allowed ?)…. refusing to accept common words like “solely” “unique” .and “unpublished”.? 14/544,670 filed 4′ years ago 1/31 /2015 I encourage any Applicant to keep a Notebook, Sten Gerfast
Scott PierceJanuary 6, 2019 11:16 am
Correction: “AIPLA,” of course, should be “AIA” (America Invents Act).
Scott PierceJanuary 6, 2019 10:07 am
Great reminder, Gene. I have a few canceled letters from the 50’s where my father had mailed himself invention disclosures. It was considered a way of providing evidence of conception, regardless of whether an inventor was interested in obtaining exclusionary patent rights. He patented his inventions, and so did not rely on them as substitutes for timely filing (to my knowledge) his own patent applications (provisional applications were not available at the time, of course). Statutory Invention Registration (SIR), which was enacted as 35 USC 157 in 1984, was a better way for those who wanted protection from others who would obtain patents, but were not interested in obtaining their own exclusionary patent rights. SIRs became somewhat obsolete with the AIPA of 1999, which provided for publication 18 months after filing a patent application, and 35 USC 157 was repealed with enactment of the AIPLA in 2013.
Among the most important reasons to keep a notebook (contemporaneously witnessed by two people who have first-hand knowledge and understood your work at the time), to my mind, is inventorship, which still matters, particularly with respect to the effect on patents of joint research agreements and joint ownership, obviousness-type double patenting, the effect of published prior art, and derivation proceedings, which became codified at 35 USC 291 under AIPLA, not to mention the persistent “muddy metaphysics” of inventorship itself. (Mueller Brass Co. v. Reading Industries, 352 F.Supp. 1357, 1372 (U.S. Dist. Ct. E.D. Penn 1973)(“The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law.”))
Confidentiality agreements probably should be considered a last resort, it seems, at least because they need to be enforced apart from any patents that ultimately issue.
The best advice, I think, continues to be: “File first, talk later.”