On March 16, 2013 the U.S. will switch from a “first to invent” to a “first inventor to file” system, thus bringing it into line with most other patent jurisdictions around the world. With this change, if two people separately apply for patents on the same invention, the patent will go to the inventor who filed a patent application first (assuming that neither inventor published prior to filing). Regardless of the change, OTL still encourages all researchers to maintain good laboratory notebooks to document conception and reduction to practice of inventions. (see highlights of the America Invents Act)
1. When properly kept, a laboratory notebook is important because it establishes a permanent record which can be referred to in the future to prove what was done during the course of a project and particularly what inventions were made and when. When improperly kept, it may fail to prove what was conceived or done, and it may fail to fix important critical dates.
2. Assuming that an invention is made during the course of a research project, the date of "conception" and "reduction to practice" may become important. Generally, a sketch and a brief written description are sufficient to establish conception. Reduction to practice can be established only by the actual construction and successful testing of a device incorporating the invention.
During prosecution of a patent application before the Patent Office, or even at times after issuance of a patent, another applicant for a patent may initiate a contest referred to as an "interference," to determine who was the first inventor. Each party has an opportunity to take depositions and to submit documentary proof to show their dates of conception and reduction to practice. The patent for the invention is then awarded in accordance with the facts proven by this evidence.
3. Even if the subject matter of a research project is not made on the basis of a patent application, it may become important to prove what was done. For example, someone else may obtain a patent on subject matter reduced to practice during the course of the work. In patent infringement litigation which may follow, the earlier laboratory work may establish a good defense. In another situation, it may be desirable to prove whether or not an invention occurred in the course of a specific research project.
4. From a legal standpoint, a laboratory entry should be competent to prove certain facts, such as the conception of an idea, the testing of a model, and the results of the test. It is possible for a laboratory entry to be so vague and lacking in clarity that it is not competent to prove such matters. For example, the entry may be so fragmentary that it is meaningless by itself, and can only be made intelligible when it is interpreted by the author. Such an entry is very little better than ordinary recollection without the aid of a document. Also, entries can be kept in such a manner that it is difficult to determine when the entry was made. Also, it may be an entry known only to one party; that is, not witnessed or explained to anyone else who is available to serve the essential function of corroborating witness.
5. The ideal notebook is one having all of the entries in ink or other permanent medium, using the standard laboratory book having permanent pages. All of the entries are identified with respect to the particular project for which the work was done. The entries include all formulae or diagrams and sketches of circuits and equipment which were considered during the project, including the ones actually built and tested. Diagrams and sketches should be accompanied by explanatory memoranda sufficient to identify and explain the subject matter. Another investigator, by looking over these entries, should be able to determine the nature of the project, when it was commenced, what ideas were considered during the project, the compounds made or circuits and equipment actually built and tested, the results of the tests, the dates with respect to all of the above, and the final conclusions.
6. Even though a laboratory notebook may not be kept in ideal fashion, the entries may be valuable at some future time provided certain simple safeguards are observed. The following comments may be helpful to avoid more common mistakes:
7. In general, all of the above must be kept within reason. It should be possible to keep records in reasonably complete and clear form without becoming too time-consuming and burdensome.