UNIVERSITY OF PENNSYLVANIA
ESE Senior Design Lecture
Laboratory Notebooks and
Patent Protection of Intellectual
Property
September 19 2012
William H. Murray, Esq
irishbillmurray@comcast.net
1
Protectable Intellectual Property
Product of human intellect that is:
 Unique
 Unobvious
 Has value
2
Basic Forms of Protection of
Intellectual Property



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Patent
Trademark
Copyright
Trade Secret
3
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
4
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
5
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.
6
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
7
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 – Applies to patent applications
or patents with an effective filing date on or
after March 16, 2013
8
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(§135) provisions are no longer in effect.


considerations of diligence, abandonment,
suppression an concealment are not relevant
Derivation is an important issue

Effect of Derivation on Prior Art - 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)).
9
Preserving Patent Rights in the US (cont)

America Invents Act

Under the first to file regime

Derivation is an important issue (cont)

Effect of Derivation on Patent Rights - the first filer
is not entitled to any claims in either a patent
application or issued patent which are directed to
an invention shown to have been derived from a
later filer (proposed §295 “Derived Patents” and
§135(d) “Derivation proceedings, Effect of Final
Decision”).
10
Preserving Patent Rights in the US (cont)

America Invents Act

Derivation – there are three requirements
necessary to establish derivation
First - a prior, complete conception of the
claimed subject matter, and
 Second - communication of the complete
concept to the party charged with derivation
 Third – the prior application was filed without
authorization.

11
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
12
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.
13
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

14
Preserving Patent Rights in the US (cont)

Conception (cont)

Corroboration – proof of complete conception
cannot be established with the prior inventor’s
testimony alone; such proof requires
corroboration with contemporaneous evidence


One must present corroborating evidence of a
complete conception of the claimed subject matter
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)

Conception (cont)

Corroboration (cont) - An important form
of the required corroboration is typically
provided by laboratory notebooks
which contain contemporaneous entries
of the work performed.
16
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.
17
Preserving Patent Rights in the US (cont)
 Laboratory
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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: ____________
18
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
20
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)
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Best Practices Checklist
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Make entries legibly and in permanent form
Date entries
Do not erase or otherwise change entries
Use consecutive pages
Do not remove pages
Avoid blank pages
Identify task or project
Include and explain sketches, diagrams, etc
Permanently attach and identify photos, charts, etc
Have entries frequently witnessed
22
Preserving Patent Rights in the US (cont)

Laboratory Notebooks (cont)
 Why
Are They Important?
Can be used to provide dates of conception
 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
 Can be used as the basis for filing a provisional
patent application.

23
Preserving Patent Rights in the US (cont)

Provisional Patent Applications §111(b)

Requires a specification and drawing but does
not require claims.
The specification must meet the disclosure
requirements – a clear and concise written
description of the invention (§112) – but need not
be in a formal patent application style
 If drawings are necessary to understand the
invention, they may be informal

24
Preserving Patent Rights in the US (cont)

Provisional Patent Applications §111(b)

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Considering the informal nature of a provisional
patent application, a copy of pertinent pages of a well
kept notebook can be used as the basis for the
required specification and drawing.
Benefit – because of its informal nature, a provisional
patent application can be prepared and filed very
quickly, especially if lab notebook entries are used.
Caveat – to preserve its early filing date, the
provisional application must be converted to a nonprovisional application within 12 months.
25
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.
26
REMEMBER

Document acts of invention

Diligently maintain a laboratory notebook

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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
27
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 ?
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