Edwin V. MerkelCarissa R. Childs

LeClairRyanA Professional Corporation

290 Linden Oaks, Suite 310Rochester, NY 14625

First to Invent vs. First to File:The Importance of Keeping a Proper

Laboratory Notebook

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What You Will Learn Today Something About Patent Law and the Likely

Changes to the Law Why Your Notebook Matters

• Use your notebook to remove rejections raised during prosecution of your patent application

• Use your notebook to win a contest with another party trying to patent the same invention

What You Can Do to Make Sure Your Notebook is Acceptable as Evidence

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Current Law = First to Invent: Inventor with earliest date of invention is entitled to a patent (if all other requirements of patentability are met)• Unique to U.S. Patent System

vs. Proposed Law = First Inventor to File:

The inventor with the earliest patent filing date is entitled to a patent (if all other requirements of patentability are met)• Single exception under new law

Patent Reform: The End of the First to Invent System?

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Patent Reform: The End of the First to Invent System?

Pending Legislation• March 2011: Senate passed Patent Reform bill• June 2011: House passed revised version of bill• This week: Senate voted to end debate on the

revised House bill and move ahead with a vote Effective Date of Pending Legislation

• 18 months after enactment (for aspects related to first inventor to file)

• Current laws will still apply to all patent application (and patent) claims having an effective filing date before the date the new laws take effect

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Requirements for Patentability

Patentable Subject Matter• Any new and useful process, machine, article of

manufacture, or composition of matter

Prior Art Identified Under Section 102 of Current Patent Law• 102(a) identifies prior art “known or used by

others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant”

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Requirements for Patentability cont.

Prior Art Identified Under Section 102 cont.• 102(e) identifies “secret” prior art: published U.S.

patent application (or PCT application designating the U.S.) or issued U.S. patent filed by another before the invention by the applicant

• 102(g) identifies as prior art any subject matter of a lost interference between two or more parties; basically, the other party establishes during an interference proceeding that they invented the claimed subject matter before you

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Importance of Keeping a Proper Laboratory Notebook

Laboratory Notebook is an Evidentiary Record That Can Be Used to Establish:• Patentability of Invention

– Establish date of invention to remove prior art under 102(a),(e)

– Establish priority of invention during an interference proceeding−102(g)

• Determine Inventorship

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First to Invent vs. First to File

First to File System (Pending Law) • A is entitled to patent

A

BDate of Filing

Date of FilingDate of Invention

First to Invent System (Current Law) • B may be entitled to patent if B’s date of invention

predates A’s filing date or date of invention

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First to Invent: Eliminating Prior Art

If A is Cited as Prior Art, B May Still Be Entitled to Patent if B’s Date of Invention Predates A’s Filing Date

A

BDate of Filing

Date of FilingDate of Invention

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First to Invent: Eliminating Prior Art cont.

Prior Art (recap)• Any printed publication, use, or knowledge of invention by

another before applicant’s date of invention • “Secret” prior art—a published patent application or issued

patent by another that is filed before your application Filing Date of Your Patent Application is Considered Date of

Invention Until Proven Otherwise Eliminating Prior Art

• Submission of a sworn declaration by all inventors along with notebook evidence corroborating a date of invention that antedates the date of the prior art (publication or filing date)

• This is not available for those publications having a publication date that is more than one year before your filing date

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First to Invent: Interference

If A and B Are Claiming the Same Patentable Subject Matter, then B May Be Entitled to Patent if B’s Date of Invention Predates A’s Date of Invention

Statistics Suggest That the Party Who is First to File is Usually, but Not Always, the First to Invent

A

B

Date of Filing

Date of FilingDate of Invention

Date of Invention

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First to Invent: Interference cont.

Interference• Contested proceeding in the U.S. Patent and Trademark Office

(PTO) between at least one patent application and either another patent application or patent claiming the same patentable subject matter to determine who is entitled to a patent

Presumption at Outset• First to file (Senior Party) is first to invent unless the party who is

later to file (Junior Party) can demonstrate priority of invention

To Win • Junior party must overcome presumption and prove earlier date of

invention; if not successful, Senior party wins• No abandonment, suppression, or concealment

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Date of Invention

Conception of Invention (Mental Part)• Recognition of a definite and permanent idea of the

complete and operative invention

Reduction to Practice (Physical Part)• Actual: making and testing the invention• Constructive: filing of a patent application

Diligence• Establishing applicant’s continual work to reduce the

invention to practice after conception

Corroboration• Evidence and witnessed testimony that independently

confirms the facts presented by the inventor(s)

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A

B

Actualreductionto practice

U.S.filingdate

Actualreductionto practice

U.S.filingdate

Conception

Conception

Winning an Interference

Inventor B Entitled to Patent

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AActual reductionto practice

Conception

Conception Actual reductionto practice

Commencement of Diligence

Inventor B Entitled to Patent if Commencement of Diligence is PRIOR to Inventor A’s Conception and CONTINUOUS

(no unexcused time gaps) until the later reduction to practice

B

Winning an Interference

U.S.filingdate

U.S.filingdate

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Establishing Date of Invention:The Laboratory Notebook

The Laboratory Notebook Should:• Establish Conception of the Invention

• Support Reduction to Practice

• Demonstrate Diligence

• Establish the Basis for Corroboration by a Non-inventor

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The Proper Laboratory Notebook

A Bound Notebook Written in Ink Does Not Contain Eraser Marks Does Not Contain Modifications of Prior Entries Has All Pages Numbered

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The Proper Laboratory Notebook

Has No Blank Pages and No Pages Removed Printouts, Photos, etc. Permanently Attached to

Notebook Page All Figures and Calculations are Labeled All Abbreviations Defined Is Indexed by Number, Author and Subject Matter

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The Proper Laboratory Notebook

Contains Outlines of All Experiments• Notations to failed experiments are important for diligence

Detailed Description of Data without Overly Speculative Interpretation

Records Discussion with Collaborators & Colleagues Every Entry is Signed and Dated by Inventor and

Witness• Witness is a non-inventor who fully comprehends work• Without a proper witness to corroborate the asserted dates

of invention, the priority case will likely fail unless there is some other basis of corroboration

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Example: Sufficient Corroboration

• Inventor’s notebook included work performed by lab technician and was periodically witnessed by co-workers familiar with the inventor’s work.

• Technician working on behalf of inventor provided testimony concerning particular experiments that he performed, the data for which was recorded in the inventor’s notebook.

Donohue v. Baudry, 223 USPQ 823, 826-827 (Bd. Pat. App. & Interfer. 1984)

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Example: Sufficient Corroboration

• Inventor’s notebook was unsigned and unwitnessed, but corroborated sufficiently by later documents (record of invention and application) containing identical disclosures.

• Witness testimony, by a now disinterested party, also provided corroboration. Witness had viewed two experiments in their entirety.

Blicharz v. Hays, 496 F.2d 603, 606 (CCPA 1974)

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Example: Sufficient Corroboration

• Inventor notebooks and testimony were provided (but not clear whether notebooks were witnessed)

• Corroboration provided by testimony of an associate and independent circumstantial evidence of inventor’s withdrawal of supplies to practice the invention, as well as by testimony of co-worker who examined a product produced by the recited process.

Lacotte v. Thomas, 758 F.2d 611, 613 (Fed. Cir. 1985)

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Example: Insufficient Corroboration

• Unwitnessed laboratory notebook containing experimental evidence performed by technicians unaware of what they were testing, provided evidence of conception but not actual reduction to practice.

Singh v. Brake, 222 F.3d 1362, 1370 (Fed. Cir. 2000)

• Affidavits by non-inventors who merely aver that they had read and understood experimental data (provided with inventor affidavit) were insufficient.

Hahn v. Wong, 892 F.2d 1028, 1031 (Fed. Cir. 1989)

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What About Electronic Notebooks?

Electronic Evidence Accepted by USPTO • Relevant

• Authenticated

• Corroborated

Authentication Difficult to Prove • Data can be easily changed or modified

• Dates can be modified

• Electronic signatures can be modified

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Electronic Notebooks – Some Guidelines• Adopt an Official Laboratory Procedure for Electronic

Record Keeping

• Generate Hard Copies of all Entries which are Signed, Dated and Witnessed and Permanently Attach in Bound Notebook

• Use Electronic/Digital Signature Software

• Use Automated Digital Time-Stamp Software

• Use Hardware or Software that Prevents Editing Original Research Descriptions

• Use Security Tools to Prevent Unauthorized Access

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Is There a Role for Laboratory Notebooks with Proposed Patent Reform?

YES! Notebooks Are Important For Establishing

Inventorship• Correct inventorship is critical to obtaining a valid patent• Honest mistakes in inventorship can be corrected, but

there must be some evidence to support the correction

Notebooks Will Be Important for Establishing Derivation of an Invention

Basis for Asserting Patent Invalidity in Post-Grant Review Proceeding

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Inventorship

“Determining ‘inventorship’ is nothing more than determining who conceived the subject matter at issue, whether that subject matter is recited in a claim in an application or in a count in an interference.”

Inventorship ≠ authorship

Joint Inventorship• Joint inventors need not physically work together or

at the same time• Joint inventors need not contribute to the same degree• Inventive contribution to a single claim is sufficient for

joint inventorship

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Determining Inventorship: The Role of Notebooks

A Proper Notebook Should:• Identify source, date, and content of instructions or

ideas of others• Identify inventive contribution of yourself and others

Notebook Can Be Important to:• Determine inventorship• Correct inventorship• Establish ownership (which follows from assignment by

inventors)• Provide a basis for the allocation of royalties

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Determining Derivation

Applicant having later filing date entitled to patent if he can show applicant having earlier filing date derived the invention from him

Derivation Can Be An Issue in Current Interference Proceedings Derivation Proceedings are Provided for in the Pending

Legislation To Prove Derivation, the Later-filing Applicant Must Show:

• Earlier conception of the invention; conception must be complete (nothing else to do before reducing it to practice)

• Communication of the invention to the party who filed the earlier application

Thank you