IP: The Notebook, end of a love story?

3 reasons to be diligent with witnessing notebooks post AIA

It has always been important to keep thorough records of conception and reduction to practice of an invention in case of an interference between two patents or to antedate a prior art reference, usually accomplished by signing and witnessing laboratory notebooks. Despite widespread sentiment, after the new patent rules take effect under the America Invents Act (AIA), the practice will still be relevant in derivation proceedings or antedating certain prior art.

On March 16, patent law in the U.S. undergoes a sea change, from a “first to invent” to a “first inventor to file” system, which also ushers in new rules for resolving a dispute over who is the true inventor of the claimed subject matter. For an application filed prior to March 16, if two applicants claim the same invention, 35 U.S.C. §102(g) of the patent statute requires demonstration of conception of the invention and diligence toward reduction to practice of one applicant prior to conception/reduction to practice by the other applicant. For claims with priority on or after March 16, the first entity to file a patent application is assumed to be the first to invent, and §102(g) is not available for proving invention prior to the filing date.

Signed, Sealed, Delivered: It has been posed that witnessing lab notebooks (physical or electronic) will become passé under these new rules. Even without §102(g), the benefit of documenting and witnessing data and concepts should not disappear. There are several reasons why the practice should continue.

1. Collaborations: Many ideas and inventions result from collaboration between two entities. Even with an agreement detailing how to handle IP arising from the collaboration, there is the possibility that each party in the collaboration may independently file an application and omit the other party. Having signed and witnessed lab notebooks that detail the ideas and concepts behind the invention, who carried out the experiments and when they were performed can be important in an affidavit by Inventor B alleging derivation. The communication of the idea to Inventor A must be corroborated, and a signed and witnessed notebook may help satisfy the corroboration requirement. Witnessing documents may also obviate the need to use declarations to authenticate documentary evidence (e.g., similar to the Federal Rules of Evidence) in derivation proceedings, especially if an inventor is unavailable to sign an affidavit.  

Contributing Author

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Katherine Neville

Katherine Neville, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. Her practice focuses on biotechnology patent prosecution for a range of...

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