Patent Notebook Consequences


A Ciphers By Ritter Page


Needing to fill in a lab notebook -- and get witness signatures -- is a hassle which leads to omissions. Can we avoid this?


Contents


Subject: Lab notebook documentation Date: Wed, 09 Sep 1998 11:57:56 -0700 From: jsalb@ix.netcom.com (Jesse Salb) Message-ID: <35f7cf68.218635090@nntp.ix.netcom.com> Newsgroups: misc.int-property Lines: 8 Can someone offer an opinion on, or point me toward a web discussion of, the acceptable forms of documentation for new inventions. I do mostly computational chemistry, in which so much of the work and results are computer-based, that the standard, handwritten, witnessed lab notebook model seems inconvenient and outmoded. Is there an acceptable alternative? Jesse
Subject: Re: Lab notebook documentation Date: Thu, 10 Sep 1998 09:13:03 -0400 From: "David D. Lowry" <ddlNOSPAM@dbrc.com> Message-ID: <35F7D05F.1A19@dbrc.com> References: <35f7cf68.218635090@nntp.ix.netcom.com> Newsgroups: misc.int-property Lines: 36 Jesse Salb wrote: > > Can someone offer an opinion on, or point me toward a web discussion > of, the acceptable forms of documentation for new inventions. I do > mostly computational chemistry, in which so much of the work and > results are computer-based, that the standard, handwritten, witnessed > lab notebook model seems inconvenient and outmoded. Is there an > acceptable alternative? > > Jesse The witnessed and signed bound lab notebook is outmoded and inconvenient, but it is still the best way to record your ideas and data. I've heard of some companies selling "electronic lab notebooks", which are applications that run on PCs, and strive to record and date your entries. How well they work I don't know. The problem which they all must overcome is recording in such a way that editing the content or the date is impossible. Obviously this can be done, for example using WORM (write once, read many) CDs, or various encryption techniques. But the other problem is that if a dispute ever gets to court, the data will be disputed. Obviously real lab notebooks can altered, but they are well accepted as evidence, while the newer electronic systems are not "proven" yet. Stick to the lab notebook. It sucks to keep adding entries, but you will find it useful beyond the usual legal requirements. DDL [ David D. Lowry (remove "NOSPAM" to email) [ Registered Patent Attorney ddl@NOSPAMdbrc.com [ Dike, Bronstein, Roberts & Cushman LLP www.dbrc.com [ Boston, MA 02109 617 523-3400 [ [CLOS >= java*10 > C++ * 100
Subject: Re: Lab notebook documentation Date: Thu, 10 Sep 1998 21:18:11 -0700 From: Gideon Gimlan <gimlan@earthlink.net> Message-ID: <35F8A483.CBEE908F@earthlink.net> References: <35F7D05F.1A19@dbrc.com> Newsgroups: misc.int-property Lines: 53 First, you must understand WHY you would want to document your date of earliest invention. It is only out of worry that you will get into a contest as to who was first to invent in the United States.The documentation does not secure any patent rights for you. You have to file a patent application for that. Second, you must understand that the question becomes whether you have independent corrobaritive evidence if you ever do get into an interference fight (who was first to invent). There is no magic to a bound notebook. The magic lies in having some person testify on your behalf and what that testimony proves. If your notebook is not witnessed by a noninventor, it is basically worthless David D. Lowry wrote: > Jesse Salb wrote: > > > > Can someone offer an opinion on, or point me toward a web discussion > > of, the acceptable forms of documentation for new inventions. I do > > mostly computational chemistry, in which so much of the work and > > results are computer-based, that the standard, handwritten, witnessed > > lab notebook model seems inconvenient and outmoded. Is there an > > acceptable alternative? > > > > Jesse > > The witnessed and signed bound lab notebook is outmoded and > inconvenient, but it is still the best way to record your ideas and > data. > > I've heard of some companies selling "electronic lab notebooks", which > are applications that run on PCs, and strive to record and date your > entries. How well they work I don't know. The problem which they all > must overcome is recording in such a way that editing the content or the > date is impossible. Obviously this can be done, for example using WORM > (write once, read many) CDs, or various encryption techniques. But the > other problem is that if a dispute ever gets to court, the data will be > disputed. Obviously real lab notebooks can altered, but they are well > accepted as evidence, while the newer electronic systems are not > "proven" yet. > > Stick to the lab notebook. It sucks to keep adding entries, but you > will find it useful beyond the usual legal requirements. > > DDL > [ David D. Lowry (remove "NOSPAM" to email) > [ Registered Patent Attorney ddl@NOSPAMdbrc.com > [ Dike, Bronstein, Roberts & Cushman LLP www.dbrc.com > [ Boston, MA 02109 617 523-3400 > [ > [CLOS >= java*10 > C++ * 100
Subject: Re: Lab notebook documentation Date: Fri, 11 Sep 1998 09:06:33 GMT From: oppedahl@patents.com (Carl Oppedahl) Message-ID: <6tap6p$nnm192_002@news.panix.com> References: <35f7cf68.218635090@nntp.ix.netcom.com> Newsgroups: misc.int-property Lines: 21 In article <35f7cf68.218635090@nntp.ix.netcom.com>, jsalb@ix.netcom.com (Jesse Salb) wrote: >Can someone offer an opinion on, or point me toward a web discussion >of, the acceptable forms of documentation for new inventions. I do >mostly computational chemistry, in which so much of the work and >results are computer-based, that the standard, handwritten, witnessed >lab notebook model seems inconvenient and outmoded. Is there an >acceptable alternative? You didn't say which country you'd like to get patent protection in. If it's the United States, then you should simply file a provisional patent application the same day that any of your inventors writes down any new invention. After an adequate provisional application has been filed on a particular invention, then as to that invention you can stop worrying about "inconvenient, outmoded" handwritten lab notebook. The cost, $75 or $150, is probably insignificant compared with the cost of operating your laboratory. To read more about provisional patent applications, see http://www.patents.com/patents.sht .
Subject: Re: Lab notebook documentation Date: 11 Sep 1998 22:52:51 GMT From: bigipguy@aol.com (Bigipguy) Message-ID: <1998091122525100.SAA08160@ladder01.news.aol.com> References: <6tap6p$nnm192_002@news.panix.com> Newsgroups: misc.int-property Lines: 51 In article <6tap6p$nnm192_002@news.panix.com>, oppedahl@patents.com (Carl Oppedahl) writes: >You didn't say which country you'd like to get patent protection in. If it's >the United States, then you should simply file a provisional patent >application the same day that any of your inventors writes down any new >invention. After an adequate provisional application has been filed on a >particular invention, then as to that invention you can stop worrying about >"inconvenient, outmoded" handwritten lab notebook. The cost, $75 or $150, is >probably insignificant compared with the cost of operating your laboratory. This is not good advice. If you instantly develop a complete invention in a single day, then maybe it does make sense to file a provisional case that day, I don't know. Though it will take a lot more than $75 to see that it's done correctly. I'd never want a non-lawyer to submit statements about what his or her invention is to the PTO - statements written by non-lawyers are invariably too narrow & may result in estoppels later. To see that the provisional application is properly written (and indeed filed), a lawyer should prepare the application. The idea that a provisional application can be a cheap form of "priority protection" is illusory - you get what you pay for. But that assumes that the act of invention is instantaneous. In real research labs, the reduction to practice does not take place immediately after conception, but instead may take place over a long period of time. There likely will be many false starts, and the inventors generally will collect a lot of data. In a patent interference or in a priority contest in a lawsuit, evidence of such work may be used to demonstrate both conception and diligence in reduction to practice. Indeed, without such evidence, the inventor will not be able to prove conception, nor diligence in reduction to practice. Moreover, under the law, any evidence of conception and diligence must be corroborated. If it's not corroborated, you might as well forget it. And the date of corroboration is what controls. In the context of a laboratory notebook, that means the date the notebook is witnessed BY A NON-INVENTOR, not the date an inventor writes down. Given this, one should not try to rely on provisional filings to preserve priority of invention. Simply put, it's neither practical nor desirable to try to file a provisional application to document each day of research. If you wait until you've got a defined "invention" to start making a record, then you're vulnerable to a priority attack from someone who has kept adequate records all along. Nor is it desirable to dispense with the lab notebook system. The law requires corroboration of the acts leading to invention, period. Like it or not, if you don't have a witnessed lab notebook, you probably don't have corroborating evidence of what you've done. The notebook system may seem outmoded or anachronistic, but I know of no other record-keeping system that will suffice for your purposes.

Terry Ritter, his current address, and his top page.

Last updated: 1999-02-20