Lab Notebooks and the New Patent Law
By Brita Belli
When it comes to proving inventorship and providing evidence of one's process of invention, there is nothing more important than the lab notebook.
On Thursday, Sept. 12, Charles Vorndran and Micahel Terapane, two attorneys from Pabst Patent Group in Atlanta, Georgia, spoke to an assembled group at the Yale Office of Cooperative Research (OCR) to discuss the importance of the careful keeping of lab notebooks, particularly in light of the new America Invents Act, which went into effect in March 2013. The event was the first in OCR's educational series Protecting Your Innovative Research and Discoveries in which expert attorneys discuss innovation and discovery protection in light of the patent law changes.
The AIA fundamentally changed patent law from a "first to invent" to a "first to file" system. Now, says Vorndran, a partner at Pabst, "your notebook should be your diary." In addition to data, the notebook should track whether one gave a seminar, sent an email to another lab or spoke about the idea or invention with a colleague. And, he adds, it's important to record ideas. "If you conceive of something and it actually works," Vorndran says, "that's the date of invention."
There are several ways that attorneys demonstrate a notebook's authenticity in a court of law: from handwriting analysis to distinctive characteristics. Most important say the attorneys, is that a notebook is kept consistently. Other guidelines include:
- signing and dating all entries
- using a permanently bound notebook
- numbering notebooks to establish chronological order
- scratching through and making corrections rather than erasing.
In addition, if one has a particular experiment or study that has a potential for patentability, the attorneys recommend that the researcher have a witness sign and date it. (See here for guidelines for e-lab notebooks).
The patent attorneys also warned participants about inadvertently disclosing information before filing a patent application. According to the AIA, disclosures no longer have to be printed to be public. They can include offers of sale, oral presentations and public demonstrations. "Bottom line," says Vorndran, "don't talk about it unless you have a patent application." Unsure about whether you need to file a patent? Let someone at OCR walk you through the process. Contact Licensing Associate Richard Andersson at email@example.com.
The second installment of the series, Protecting Your Innovative Research and Discoveries: Open Source Protection, will be held Thursday, Sep 19, 11:30 am-1 pm at AK Watson, 51 Prospect St, Room 200. Pizza will be served! Send RSVP to Diane Altschuler, firstname.lastname@example.org. The event is co-sponsored by OCR and the Yale Department of Computer Science. See here for more information.