Record keeping for inventors and
engineers
Josiah Hernández
The IP commercialization process in
the University
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Research scientist work on R&D projects
Develop and perfect R&D and publish papers
Maintain inventor’s notebook
Meet with the POITT office to see potential for Patenting invention
Fill out invention disclosure form
POITT evaluates de invention disclosure and meets with inventors
POITT performs a prior art search
POITT decides which invention disclosures will pass to the patent
filing stage
• Invention that will be patented get passed to UPR Rio Piedras to
start the patenting process with an attorney
Whose property is it?
• Under UPR’s policy (Cert. 132, 2002-03) the
University owns IP that is generated through
research conducted with the use of its
facilities and resources.
• All royalties and most fees resulting from the
IP are shared between UPR and the
individuals involved in its discovery.
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33 1/3 % - inventor(s)
56 2/3% - inventor’s UPR unit(s)
10% - UPR special fund
Any remaining amount – will be used to support
additional research and academic programs.
Determining Inventorship
• An inventor is someone who contributes
intellectually to the claimed invention
– To determine inventorship, you must first
determine what the invention is and then
determine who contributed to making it
– Often, inventorship is defined by negatives:
An inventor is not someone who merely
contributed non-inventive information. An
inventor is also not someone who simply ran
routine tests.
Record the Invention
• Keep contemporaneous notes of meetings,
telephone calls, lab work and other writings in a
bound notebook
• Have the pages of the lab notebook signed and
dated by someone who understands the
invention but is not a co-inventor
• Maintain records of slides and or disclosures
made in presentations and copies of reports
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Inventor’s notebook
• An inventor's notebook is used by inventors,
scientists and engineers to record their ideas,
invention process, experimental tests and
results and observations. It is not a legal
document but is valuable, if properly
organized and maintained, since it can help
establish dates of conception and reduction to
practice. The information can improve the
outcome of a patent or a patent contestation.
Purpose for an Inventors Notebook
• A patent grants its owner(s) the right to sue those who manufacture and
market products or services that infringe on the claims declared in the
patent. Typically, governments award patents on either a first to file or
first to invent basis. Therefore, it is important to keep and maintain
records that help establish who is first to invent a particular invention.
• The inventor's notebook (also called a journal, lab book or log book) is a
systematic device for recording all information related to an invention in
such a way that it can be used to develop a case during a patent
contestation or patent-related lawsuit.
• The notebook is also a valuable tool for the inventor since it provides a
chronological record of an invention and its reduction to practice. Each
entry must be signed and dated by a witness. The witness should not be
someone with a conflict of interest (such as a research partner). If an
inventor ever has to go to court to prove he or she was the first to invent,
then the witness would be called to the stand to testify that the signature
is theirs and they signed that page on that date.
Inventor’s mistake
• A "virtual inventor's notebook", in which one scans
note pages and emails them to oneself, would not
provide the same legal protection as a bound
inventor's notebook since it is easier to commit fraud
with a virtual notebook.
• The need for an inventor's notebook will diminish in
the future as the United States is progressively
implementing a first-to-file system. It has been said
that first-to-file eliminates a troubling source of
litigation, particularly for individual inventors who may
lack the processes and legal resources to defend
against evidentiary challenges by large corporate
research organizations.
The Physical Requirements of An
Inventor Notebook
• To best serve its evidentiary function an
inventor's notebook should be in a form where it
will be readily apparent that the contents have
not been tampered with, such as having pages
that may have been removed, replaced, or
altered. Accordingly, an inventor’s notebook
should:
– Be permanently bound with a fixed number of pages
(no looseleaf binders);
– Have all of the pages sequentially numbered;
– Have space on each page for at least one witness to
sign and date.
How To Write In The Notebook
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You Should Be The Only One Using The Notebook Other than having the notebook pages witnessed as discussed below, you should be
the only person writing in the notebook. Record your name and contact information somewhere in or on the book to identify it as
yours. It should also be clearly labeled as being confidential information.
Write Permanently & Legibly All information placed in the notebook should be in permanent ink only (nothing eraseable), and should
be clearly legible (so that a judge or jury could see and understand what has been written).
No Empty Spaces Or Skipped Pages Don’t skip pages, or leave blank areas on a page. All text should be single spaced. Each page should
be limited to entries from a single day for a single subject. Draw a large “X” through any remaining empty space on a page.
Permanently Attach Any Supplemental Materials Supplemental materials such as photographs, graphs, or drawings should be in
permanent ink, be placed in chronological order, be permanently attached to the page (e.g. by glue), and be labeled. Write next to all
supplemental material a description of what it is. Don’t Write About Different Inventions On The Same Page. If you use your
notebook to document multiple inventions, don’t mix information about different inventions on the same page: Make sure that when
you use a page it only has information about one invention. Use a “continued from page” and “continued on page” reference on each
page to connect together pages about an invention.
NEVER Make Alterations Of Any Kind Never tear out pages, erase anything, or alter notebook entries. If you make a mistake while
making an entry just draw a line through it so that the mistake is still readable, then date and initial next to the line. NEVER do anything
to a page after it has been read and signed by a witness.
Don’t Record The Substance of Communications With Your Attorney You may need to disclose your notebook contents to third
parties, such as witnesses, a patent examiner, judge, or jury. To minimize the risk in such cases of waiving the privilege of confidentiality
you have for communications with your attorney (which can be valuable in litigation over an invention), it is recommended that you
generally avoid recording the substance of any communications you have had with an attorney in your inventor notebook. You can
always keep a record of any such communications separate from the notebook if necessary.
What To Write In The Inventor
Notebook
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Your Inventive Concept As soon as possible, describe in full detail what your
invention is, and how you contemplate the invention could be made and used. Use
both text and drawings if appropriate. Someone else in the area of technology for
the invention should be able to clearly understand from your description what the
invention is, and how you would make and use the invention.
Your “Reduction To Practice” Efforts The act of invention is not legally complete
until your invention has been “reduced to practice”. An invention is reduced to
practice by either (1) filing a patent application, or (2) building a working
prototype of the invention. Be diligent in your efforts to reduce your invention to
practice by working in a continuous and reasonable manner to reduce your
invention to practice with no large unexplained gaps of inactivity. Make regular
and detailed entries in the notebook that describe what you are doing to reduce
your invention to practice (e.g. ordering parts, conducting experiments, etc. . . ).
Describe all the facts and circumstances of what you do, when you do it, and why
you do it. Save any records related to your efforts to reduce your invention to
practice (e.g. receipts, correspondence, test results). If you build a working
invention have your corroborating witness(es) observe, in confidence, the
invention working.
GETTING YOUR NOTEBOOK
WITNESSED
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In the U.S. evidence related to invention may need to be corroborated. So it can be important to
disclose your inventive concept and reduction to practice efforts in confidence to at least one
independent witness who is not a co-inventor, and document this by having them sign your
notebook.
a. Treat Your Inventor Notebook As Confidential Treat your notebook as highly confidential. This is
important to maintaining your rights. Do not disclose the contents of it to anyone, other than your
attorney, unless they first agree in writing to keep the information confidential and not use it. b.
Make Sure Any Witness Used Is Qualified Any corroborating witness must be a person who is not
a co-inventor, is an adult, and who has the technical background to both read and understand your
description of the invention. It is recommended that any witness used be someone who is credible,
trustworthy, and of good character. Ideally they should not have a financial stake in the success of
the invention, and not be an immediate family member. A witness should preferably be someone
who you believe is reasonably likely to be available to provide testimony for you, if need be, many
years after they witness your notebook.
c. Always Use A Written Witness Confidentiality Agreement Before a witness reads any pages in
the notebook with information about the invention, the witness should first read and sign a
confidentiality agreement (also commonly referred to as a "non-disclosure agreement") where the
witness promises to keep the confidential information disclosed to them a secret and not use the
information.
Getting your notebook witnessed
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Give each witness a copy of the completed confidentiality agreement that they have read and
signed, and something of value (e.g. a dollar) in exchange for their agreement. Doing this helps to
ensure that the agreement by the witness to keep your invention information confidential will be
legally enforceable.
d. How To Have The Notebook "Witnessed" After having signed a written confidentiality
agreement, the witness(es) should read and understand the contents of each completed page in
the notebook that has not already been witnessed. After reading the page they should sign and
date (in permanent ink) a statement somewhere on the page indicating that they read and
understood what was disclosed on the page on that date (see the sample hypothetical notebook
page above).
e. Only One Witness Is Required, But Two Is Better Using two witnesses increases the chances of
at least one witness being available later if need be. However, one witness signing a page is
sufficient.
Keep your witnessed inventor notebook in a safe place, and do not discard it even after you have
filed a patent application and received a patent. Sometimes a witnessed inventor notebook will not
be needed until years later.
IMPORTANT: Not A Substitute For A Timely Filed Patent Application A properly maintained
witnessed inventor notebook when used properly can be valuable. However, a witnessed inventor
notebook is not a substitute for a timely filed patent application, and will not by itself give you any
exclusive rights in an invention. Accordingly, if you do want to secure exclusive rights in an invention
make full use of a witnessed inventor notebook but don’t unnecessarily delay in filing a patent
application.
Invention Disclosure
• Gives the OPITT basic information about the
invention
• The ID should have a brief description of the
invention in simple to understand language
• The description should be “straight to the point”
• The description should focus on its inventive
concept (what makes it different then the rest)
• Diagrams and pictures should be included to
better understand the invention