Regardless of the method of inventing used, detailed
records of concepts, test results, and other information related to making invention
should be maintained. Proper record keeping is important because it can be used as proof
of the conception date - a.k.a. the date of invention. It should be noted that mailing
yourself a sealed letter with invention documents enclosed is not an accepted method of
proving your invention's conception date for the United States Patent & Trademark
The conception date used to be important since it was
utilized to argue against prior art cited by the USPTO or in an interference
proceeding. However, effective March 16, 2013, the United States
switched from a "first to invent" patent system to a
first to file patent system. The conception
date for your invention can still be valuable in a dispute with a
third-party, but you should focus on filing your patent applications earlier
The conception date may be relied upon as the date
of invention for determining patentability and priority only if the inventor exercised due
diligence in reducing the invention to practice. This is accomplished by the inventor
exercising continuous activity from before the reduction to practice date of another
invention to the date of reduction to practice. Reduction to practice may be accomplished
by either: (i) filing a patent application, or (ii) constructing a prototype. Continuous
activity does not mean the inventor has to work on the invention every waking
To establish diligence, the person must account
for the entire critical period from the time just prior to another's conception. In
determining priority, there is no race of diligence. The first to reduce to practice
prevails regardless of lack of diligence unless the second to reduce to practice shows
Detailed record keeping is one of the most
important parts of the invention process, yet few inventors maintain adequate records of
their invention. The following information provides a proposed outline for maintaining
invention records. Neustel Law Offices, LTD also has an Invention Recording Document that you may
utilize for recording your invention.
All inventors, whether individual inventors or
employees of a business, should maintain a bound notebook. The information in the notebook
is useful proof of when an invention was made, and whether the inventor was diligent in
developing the invention.
A good notebook entry also can be helpful in
proving that an invention is not obvious and was developed independently, without copying
a competitor's product or patent. The probative value is not nearly as great, however, if
a loose-leaf notebook is used in which pages are easily inserted or removed. It is also
important to line through any blank portion of the pages of the bound notebook.
Employers should have a secured location where
both completed and uncompleted notebooks may be stored. Also, each notebook should be
assigned a consecutive number to identify each notebook. Records of when each notebook was
taken from the secured location and placed back in the secured location should also be
SIGNED AND DATED ENTRIES
Every entry in the bound notebook should be signed
and dated by the participants, indicating the particular project with which the entry is
associated and, if possible, the entry should be signed and dated by an unbiased witness
or Notary Public. It is often advantageous to include a header on each notebook entry such
The value of an entry into a bound notebook is
directly proportional (i) to the specificity of the entry, (ii) to the care taken to date
and sign each entry, and (iii) to whether each entry was read, signed and dated by a
witness. Therefore, each notebook entry should clearly identify the nature of the entry
with particularity and contain all relevant details. An entry such as "work on new
cylinder" provides little useful information.
Entries should contain a clear and complete
explanation of the manner and process of making and using the invention in sufficient
detail to enable another person having ordinary knowledge in the field of the invention to
make and use the invention.
All computations, sketches, diagrams, test
results, etc., should be contemporaneously entered into the notebook. Notebook entries
should also describe all testing performed (not just some of the testing), the particular
type of equipment used, and the results of the testing, both good and bad.
IDENTIFICATION OF PARTICIPANTS
All persons involved in the work, and their specific
role, should be identified in the notebook entries. Unless participants are identified, it
is often difficult to establish, long after the fact, those involved in particular
activities. This type of information is also necessary to identify those who will be named
in the patent application as the inventors. This is important because if not all of the
inventors are named on a patent application, an issued patent may be declared invalid
because of fraud on the USPTO.
It is important that all loose papers, such as
drawings, test results, photographs of models, etc., be signed and dated, cross referenced
to a particular notebook entry, and preferably, then mounted (taped or stapled) in the
body of the appropriate notebook entry. Similarly, physical embodiments used to carry out
various tests, such as samples, models, prototypes and the like, should be carefully
labeled with a date, cross referenced to notebook entries, and retained.
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If you have been harmed by an invention marketing company or patent
attorney, you should immediately seek the legal assistance of a reputable
attorney licensed in your state. Michael S. Neustel is licensed to
practice law only in North Dakota and in the United States Patent &
Trademark Office. Michael S. Neustel is the owner of Neustel Law Offices, LTD and Neustel Software, Inc. Statements made in this web site are merely
opinions of the National Inventor Fraud Center, Inc. and should not be
interpreted as factual. Neither Michael S. Neustel nor the NIFC
market inventions, provide market analyses or provide marketability
analyses for inventors. You are strongly encouraged to investigate
any company or law firm you plan to work with and do not rely solely upon
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determine if the companies listed on this web site are reputable or not.
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