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UNIVERSITY OF PENNSYLVANIAESE Senior Design Lecture

Laboratory Notebooks andPatent Protection of Intellectual Property

September 21 2011

William H. Murray, Esq

irishbillmurray@comcast.net

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Protectable Intellectual Property

Product of human intellect that is: Unique Unobvious Has value

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Basic Forms of Protection ofIntellectual Property

Patent Trademark Copyright Trade Secret

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Patent Protection

Patent owners granted the right under U. S. patent law (35 USC) to exclude others from Making Selling or offering to sell Using Importing into the US

the patented invention

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Patent Protection (cont)

The grant is the right to exclude only. Not the right to practice the patented

invention Example: Patents on improvements to

the patented invention of another Has exclusive rights to improvement but

cannot practice the combination of the basic invention and the improvement without permission of owner of patent on the basic invention

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Foreign Patent Protection The grant conveyed by a United States patent is

the right to exclude others from making, using and selling only in the US.

One must apply for patent protection in those foreign countries where such protection is desired. Patent protection cannot be obtained in most

foreign countries if the invention has been publicly disclosed or used before the earliest patent application filing date.

Foreign patent applications must be filed within 12 months of the US filing date in order to obtain benefit of the earlier US filing date.

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Recognizing the Need for Patent Protection

Patent rights should be assessed for creative activities such as: Design and development of new processes,

machines, articles of manufacture and compositions of matter

Software Manufacturing methods

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Preserving Patent Rights in the US

United States Patents Are Awarded to the First Inventor – FOR NOW The first inventor is the one first conceives

and reduces the invention to practice. New America Invents Act – Patents Are

Awarded to the First Inventor to File Effective Date –Upon expiration of the 18-

month period beginning on the date of enactment of this Act.

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Preserving Patent Rights in the US (cont)

America Invents Act Under the first to file regime

First to invent (§102(g)) and interference (§135) provisions have been repealed.

considerations of diligence, abandonment, suppression an concealment no longer relevant

Derivation is an important issue regarding first to file

Disclosures appearing in applications and patents shall not be considered prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor (proposed §102(b)(2)(A)).

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Preserving Patent Rights in the US (cont)

America Invents Act Derivation – there are two

requirements necessary to establish First - a prior, complete conception of

the claimed subject matter, and Second - communication of the

complete concept to the party charged with derivation

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Preserving Patent Rights in the US (cont)

America Invents Act Corroboration – proof of complete

conception cannot be established with the prior inventor’s testimony alone

The one charging derivation must present corroborating evidence of prior conception

Adequate corroborative evidence includes physical, documentary or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party.

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Preserving Patent Rights in the US (cont)

Who Is An Inventor? One who contributes to the conception of the

claimed invention. Conception is the formation of a definite and

permanent idea of the complete and operative invention.

The idea must be sufficiently detailed that the inventor could describe all of the elements of the invention in a manner that would permit one of ordinary skill to understand and then reduce the invention to practice without undue experimentation

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Preserving Patent Rights in the US (cont)

Who Is An Inventor? (cont) A joint inventor is one whose contribution to

the conception of the claimed invention is not insignificant in quality, when that contribution is measured against the dimension of the full invention.

The principle of joint inventorship contemplates some form of collaboration or concerted effort between inventors.

Joint inventorship can be based upon contribution to a single claim.

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Preserving Patent Rights in the US (cont)

Conception Rules of Conception:

To show conception, an inventor must present proof showing recognition or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention.

Conception does not occur until the inventive idea is crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art

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Preserving Patent Rights in the US (cont)

Reduction to Practice Standard test – does the embodiment

relied upon for proof of reduction to practice actually work for its intended purpose?

Simple inventions – some inventions are so simple and their purpose and efficacy so obvious that construction is sufficient to demonstrate their workability.

Commercial viability – no requirement that an invention be commercialized in order for it to be reduced to practice.

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Preserving Patent Rights in the US (cont)

Proof of conception and reduction to practice requires corroboration with contemporaneous evidence. An important form of the required

corroboration is typically provided by laboratory notebooks which contain contemporaneous entries of the work performed.

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Preserving Patent Rights in the US (cont)

Laboratory Notebooks What Is A Laboratory Notebook?

Permanent record of what was done for each task or project maintained in chronological order.

Documents all research, experiments, procedures and results.

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Preserving Patent Rights in the US (cont)

Laboratory Notebooks (cont) Preferably bound notebooks with numbered pages. Should be kept by everyone whose work involves

innovation and creativity. Entries should be made contemporaneously as the

work is performed and maintained in chronological order.

Each page should be signed and dated by the inventor and should be signed by a witness who understands the entries.

Thus, each page of the laboratory notebook preferably contains the following notation in addition to the signature of the person performing the work and the date the entry was made:

“Witnessed and understood by:

_______________________ Date: ____________

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Preserving Patent Rights in the US (cont)

Laboratory Notebook Entries Identify task or project Record everything related to that task or

project Entries should be as descriptive as possible

including sketches if required to provide a detailed understanding of the entry

All entries should be dated, legible, factual information and data, both qualitative and quantitative

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Preserving Patent Rights in the US (cont)

Laboratory Notebooks (cont) CAUTION

Never erase entries – place a line through an entry to be deleted, leaving the underlying material legible

Never remove pages Never leave a page totally blank

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Preserving Patent Rights in the US (cont)

Laboratory Notebooks (cont) Provide a permanent, chronological

record of research which document what was done during the

course of a task or project establish what inventions were made,

when and by whom can provide credible evidence of

inventorship when properly corroborated important when issues of derivation

arise

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Preserving Patent Rights in the US (cont)

Laboratory Notebooks (cont) Why Are They Important?

Can be used to provide dates of conception and reduction to practice

Can be extremely important if an allegation of derivation is made

chronological detailed factual entries can be used later to provide the date of invention

witnesses can later provide corroborating testimony

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Preserving Patent Rights in the US (cont)

In addition to conscientiously maintaining an laboratory notebook, avoid public disclosure of invention before patent application is filed. Although there is a one year grace period in

the United States for filing a patent application after a public disclosure is made, there is no grace period in the other major industrialized countries of the world.

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REMEMBER

Document acts of invention Diligently maintain a laboratory notebook

Document work chronologically Sign and date each page Have each page signed and dated by a witness

Can provide important evidence regarding conception and corroboration in deciding derivation issues

File US patent application promptly Can be determinative of patent rights in the

first to file regime under the America Invents Act

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Electronic Lab Notebooks The courts have long recognized that traditional, hard

bound paper laboratory notebooks can be the source of reliable, credible documentary evidence. However, as with most technology, the law lags advances, even those readily understood and accepted by the scientific community. For example: results of breathalyzers finally deemed sufficiently

reliable as a reliable indicator of intoxication On the other hand lie detector results are still deemed

inadmissible in a number of jurisdictions Electronic records will, at one point, be universally

recognized as reliable documentary evidence. However, in an abundance of caution, it is highly advisable that invention records also be kept in the traditional notebook form, which has traditionally been admitted into evidence, until the law catches up with the technology.

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QUESTIONS ?