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Record Keeping for Patent Purposes

Note: The colored phrases below are the most important steps to take to protect the right of a first inventor to patent his/her invention.

University researchers who have worked in industry know that research records are kept very differently by a company. Here at Oregon State University an investigator is free to arrange data in any way that is convenient - loose leaf notebooks, one bound notebook covering several projects, or one bound notebook for each aspect of a project, forming a chronological record of the lab's activities. We at the Technology Transfer Office do not want to impose industry's mode of record keeping on faculty researchers, but since it is never apparent until later in the research that a valuable, patentable discovery has been made, it may be useful to follow some aspects of industry-type record keeping.

The United States awards a patent to the first to invent in contrast to most countries who reward the inventor who wins the race to the patent office and is first to file.

Invention is defined as a conception coupled with a sufficiently concrete idea of how to reduce the invention to practice. Therefore, the person first to conceive of an idea is the first to invent, but will lose priority unless he or she is diligent in reduction to practice. Priority is determined by a legal procedure called Interference.

For example, Professor X, in working on an idea for a new drug, puts the project on hold for a summer before picking it up again and finishing it. Several years later, another inventor claims the same invention. Who is the first to invent? It is now essential to prove what was done, when it was done, how it was done, by whom it was done and that the inventor worked diligently to reduce it to practice.

Professor X could lose the interference in his/her patent application if she/he could not prove the date of conception or that she/he was not diligent in reduction to practice. Most University record keeping is seldom adequate legal proof of date of conception or reduction to practice. An opponent who is an industry employee will usually win. The Interference proceeding will determine that someone else owns Professor X's invention. That hurts.

Here are some simple steps to follow to increase the legal persuasiveness of research records:

1. The Lab Book should be bound or of a type in which pages cannot be later inserted. Entries should be written carefully in ink, avoiding cryptic and abbreviated descriptions for first time entries of work done later. Later entries, where portions of work done repeats the work of an earlier entry, should refer to the earlier complete description. Unless such care is taken, it may be difficult years later for even the writer of the notebook - impossible for another - to read and understand what was done.

2. Unrelated topics should be on separate pages. If several entries corresponding to several days appear on a single page, each entry should be signed and dated by the author. In any event, all blank spaces should be lined out before the author and witness can sign at the bottom of the page. It is important that each page be signed by the author immediately upon completion.

3. In order to tie together the various records of a project, an author should refer to the numbers of other notebooks if pertinent, including both his or her notebooks and those of others. Similarly, notebook entries should be cited in formal reports, and other written documents relating to the project.

4. Test results obtained at a later date should be recorded on a separate page and cross-referenced to the page containing the earlier entry. Attached supporting documents must be signed and dated by the author and witness, both using his or her legal signature. Attachments should be made to original notebook pages and should include the notebook and page numbers to which they are attached.

5. In writing notebook entries, one should record all observations actually made. Do not make conclusions (either positive or negative) based on inadequate data. Erroneous conclusions may impair or destroy the patent significance of valid recorded observations. Avoid flippant, "comico-serious," unnecessary or super critical, "black and white" evaluations of results which do not show the basis for negative judgment.

6. Notebook entries should be witnessed as soon as possible after they are made; in no event should more than a week elapse before witnessing. The page is uncorroborated and hence of little value as a legal document to establish any date prior to the date the witness reads, signs and dates the pages. The witness may be a coworker who is capable of understanding the information witnessed, but is not a co-inventor. A witness simply signs as having read and understood the information on the page on a given date.

Following these steps should not be unduly burdensome.