Electronic Notebooks and the Requirements to Prove Date of Invention in Patent Interferences

This paper contains an excerpt of an email I sent to the PIUG (Patent Information User’s Group) email distribution list on November 30, 2003.

1. It would be useful to all of you to have a better understanding of the requirements relating to proof of date of invention in patent interferences in order to understand the issues relating to electronic notebooks. First, keep in mind that a date of actual invention is now only relevant in the United States and the Philippines. In all other major jurisdictions, it is the date of filing of a patent application that is the earliest date allowed to as a date of invention, except where there are issues of theft of invention.

2. There are some substantive legal issues that you should all be aware of relating to evidence of inventions for the purposes of proving priority of invention (first to invent) for U.S. patents. The law respecting how to prove priority of invention is in fact a well defined body of law. Its application to electronic record keeping merely requires an application of that law to e-records. No more, no less. Thus, it is the legal principles that are paramount, not the technology, per se, of record keeping.

3. The rule requiring corroboration: Evidence of what was invented and when that invention came into existence is generally NOT admissible in the United States Patent and Trademark Office and U.S. courts for the purpose of invalidating claims to the same invention made by another UNLESS it is corroborated by someone other than the inventor. Here, “inventor” means the person or persons who are named on the patent. (I use the word “patent” here to mean either patent or patent application, for simplicity.) Corroboration therefore requires a non-inventor to have reviewed and understood the inventors’ work. It is the date of that corroborator’s review that defines provable evidence a date of invention. Thus, a co-worker, technician, manager, or even a secretary can corroborate. Of course, it is less likely that a non-technically trained person will understand what they were asked to corroborate, and therefore, it would be harder to prove a right to a date of invention based upon a non technical person’s knowledge.

4. Chain of Custody: Evidence in legal proceedings in the U.S. is only admissible if it meets the admissibility requirements of the Federal Rules of Evidence (FREs). The FREs require that documents and things relied upon as evidence may be challenged for lack of a “chain of custody”, i.e., proof that they were in the possession and control of a person or entity that would not tamper with them.

5. In all evidentiary proceedings, most documents and things held out as evidence do not “speak for themselves”; they must be brought into evidence by testimony of a person explaining what they are and where they came from. Exceptions to this rule are self authenticating records, such as patents, publications, certain notarized documents, and the like.

6. Generally speaking, a document management system should incorporate technology and security that facilitates meeting the evidentiary requirements noted above.

Many businesses make more than a decent living helping inventors just like you make money from their inventions. From filing a patent to licensing and marketing your invention, someone is around every corner offering assistance.

Unfortunately, not all of this help is the kind you want. There are companies out there who make a living off exploiting inventors. It’s important not to get caught up in any of these scams. What you need is a professional who has experience and is licensed to help you patent your invention. You really need either a patent attorney or a patent agent.

Both patent agents and attorneys are registered to practice before the U.S. Patent and Trademark Office. No one else is. Please take note of that. No one else may legally help you fill out the paperwork associated with filing for your patent. And you definitely don’t want anyone else to help you for this aspect of your invention journey.

Remember, you want someone registered by the USPTO to help you file your patent. Don’t even think about speaking to someone else, even if they claim they will outsource the writing of your application to a patent attorney or agent.
The problem is, you need to be in direct communication with the individual helping you to file your patent. Don’t let anyone be your middleman. Gaining a patent is not an assembly line process. Your invention has completely different features than anything else out there. So you need to be able to directly communicate the novel features of your invention with the attorney or agent.

While you can work over the phone, it usually makes the most sense to meet face to face with the attorney or agent you choose. Therefore, it is best to find one not too far from where you are located. Although it can be done, a long distance relationship will probably only strain the process.

The best way to select a patent practitioner (patent agent or patent attorney) near you is through word of mouth. You may want to join a local inventors club.
You can also search through the USPTO’s list of registered patent practitioners or even just use their database to check your potential patent practitioner’s credentials.

An individual listed on the USPTO’s site will be registered to practice patent law. They must also meet the ethical requirements and can be disbarred for complaints. Please check that the patent practitioner you are considering is listed on this site before using them.

A hidden fear usually works at the back of the mind of those who introduce a new idea or product in the market “what if this idea is stolen by someone?” Even in case of golf ideas and products, claiming somebody else’s idea as own is not a new issue. Therefore, before selling any golf product or idea it is important to protect your invention.

Listed below are five ways to protect your golf idea:

1. The Inventor’s Notebook – When a new product idea comes to mind, the next question that arises is how to protect that idea from thieves and plagiarists. Keeping an inventor’s notebook is a good solution as it helps to organize all ideas and information about the invention. In fact, if a dispute arises in the future, this notebook can give legal protection to a product inventor. A notebook having bound pages, not the loose-leaf binders, should be used for this purpose. Electronic recording devices are not advisable for using as an inventor’s notebook as they are not considered reliable evidence since they can be easily manipulated.

2. Trademarks – A golf concept or idea can be protected from idea stealers by registering it for a trademark. This applies to golf products and ideas that may or may not have a patent. Trademarks have a certain limit in the protection of an idea. They can’t stop someone from manufacturing the same products under a different name or mark, they only protect the mark under which a product is sold. Golf industry advisors suggest that golf product inventors, manufacturers or sellers should register their trademark with the U.S. Patent and Trademark Office (PTO). Using the superscript “TM” after a product name or logo gives a limited trademark protection to the name or the logo.

3. Legal Documentation of Intellectual Property – All entrepreneurs, whether in golf or any other field, thoroughly realize the value of an original product idea, logo, brand name, etc. Legally documenting intellectual property helps inventors to protect their ideas and inventions from being misused by unscrupulous people or to be claimed as their own for their personal benefits. This can be done by filling out a copyright application and is discussed later. The inventor or the creator of a product can also legally document the intellectual property by sending the document to themselves through registered mail; but don’t open it.

4. Patent – Inventors of products and concepts ‘may’ want to consider a patent to protect them when prior to licensing or selling their concepts or golf prototype. According to the Doctrine of Equivalents, patent protection is not limited to the literal elements asserted by a patent. Reasonable equivalents of the listed elements also come under patent protection.

5. Copyright – Copyright laws protect a product name or a copy used for selling a product from being duplicated by competitors or any other person or company for personal profit. The other way round, while marketing or licensing a golf idea or product, make a thorough research about the market so as to avoid intentional or unintentional copying of product name, content, etc. Inexpensive copyright services are available online and can ensure it is done right.

In some cases where an entrepreneur needs to protect the trade secrets, simple Non Disclosure Agreements (NDAs) can help in protection against copying of ideas or products. Locate a group of golf industry professionals to help golf product inventors and entrepreneurs with the protection of golf ideas and products – since both you and they will want to ensure the idea is sound, solid and protected before moving ahead with the launching of a new golf product.

If you have a specific design or invention you wish to protected, you must apply for a patent through the United States Patent and Trademark Office. It is important that you do not use terms such as “patented” or “patent pending” prior to applying for or being granted a patent, because doing so is a violation of federal law. Applying for a patent through the United States Patent and Trademark Office can require special legal knowledge. It may be in your best interest to consult with a patent attorney. Here are the basic steps outlining how to obtain a patent.

The first step you will want to take to obtain your patent is to visit a local branch of the United States Patent and Trademark Office. If that isn’t convenient, you can find most of the information and required forms at the U.S. Patent and Trademark Office Web site.

Next, you will need to prepare a full and detailed proposal of your design or invention. The proposal must contain specific descriptions in English and detailed drawings. You will then prepare and execute a brief declaration that the design or invention is an original, and that it does not infringe on any existing patent.

After making the appropriate number of copies and following all instructions, you will submit your proposal and declaration to the director of the U.S. Patent and Trademark Office at your local branch or through the Internet. Upon submission, you will be required to pay filing fees for a search and examination of your proposal.

If the U.S. Patent and Trademark Office presents any objections or requests any modifications, you must address them in a timely fashion.

Obtaining a patent through the U.S. Patent and Trademark Office can be a lengthy process. If everything in your proposal is accurate and there are no objections or requested modifications, the process will be completed in approximately 18 months. If there are objections or requested modifications, the process can take much longer.

Once you obtain a patent, you will be required to pay maintenance fees. Maintenance fees are required at three to four-year intervals following the grant date. You will typically be afforded a six-month grace period to pay your maintenance fees. You must renew your patent prior to the expiration date. Patents typically last for a period of 20 years, although design patents expire after a period of 14 years. Design patents include those that improve upon or act in conjunction with another patent.

Introduction

In this article I will try to explain purpose of Provisional Patent Application, its benefits and drawbacks. Provisional Patent Application allows inventors to start patent process without incurring the high cost of patent lawyers. However, because Provisional Applications are simpler to complete then the Regular Patent Application, it doesn’t mean that inventors should take them lightly.

Documenting Your Invention

The reason why you should carefully document your idea is the following – your Provisional Patent Application may be the only source of proof that you are the original inventor and entitled to reaping the benefits of the patent. It is very possible that since the time you have submitted your Provisional Patent Application, someone else filled out paperwork for regular patent. The only thing that might substantiate your claim that you are the rightful owner of the invention is your Provisional Patent Application. One note of caution – Provisional Application is good for one year only and cannot be renewed. In fact, these applications were meant to be temporary solution until the inventor submits regular Patent Application Paperwork.

Facts about Provisional Patent Applications

Below is a Summary of things that inventor should know about Provisional Patent Applications:

1. A Provisional Patent application is never examined by the United States Patent and Trademark Office (USPTO), and therefore can never become a patent.

2. It may become part of non-provisional application file later on, once you submit your regular patent application

3. Automatically expires one year after the original filing date.

Submitting Provisional Patent Application costs 0 for an application having 100 or fewer pages of specification and drawings. Inventors should be prepared to describe their inventions in great detail; in fact, USPTO recommends that your invention should be clearly understood by the person of “ordinary skill in the art” of the invention. This means that your documentation should be detailed and simple enough to be understood by the person who is averagely skilled in your field of research. In addition, USPTO encourages inventors to specify the so-called “The best mode requirement” – meaning that inventor should disclose the best method used to achieve the desired results. For example, if invention deals with chemical solution that should be boiled to the temperature of 300 degrees, then this fact must be documented. It is improper to specify that the chemical solution should be boiled to the temperature above 200 degrees because this is not precise and will not lead to the best method of achieving desired results.

What Is Needed When Submitting Provisional Patent application

When submitting Provisional Patent application, inventor should produce:

1. Documentation that is detailed enough and clear enough to be understood by the person of “ordinary skill in the art” of the invention

2. Provisional Patent Application Cover sheet.

3. Technical drawings and graphs pertinent to the invention

4. List of inventors and co-inventors

Summary

In summary, Provisional Patent Application is a great and cost-effective way for an inventor to lock his invention for one year and buy some time in order to see

whether invention has commercial potential.

If you are interesting in reading more, please visit IdeaJets website that is dedicated in bringing quality information to the inventors all over the globe!

Robert P. Stewart
IdeaJets
IdeaJets Support

Patent numbers are issued sequentially, beginning with the number one. Patent number one was issued to Samuel Hopkins on July 31, 1790. It took 75 years for the United States Patent and Trademark Office (USPTO) to issue patent number 1,000,000. Patent number 7,000,000 was issued February 14, 2006. It took only seven years for the USPTO to move from issuance of patent number 6,000,000 to 7,000,000.

What does this mean? Simply, there is more creativity now that at any time in history. The old saw that “there is nothing new” is completely wrong. There has never been so many people and entities creating novel, unique products, technology and services, and so driven to commercialize these inventions. More patents and entrepreneurs attempting to market their products is indicative that there is more competition for successful placement.

It is essential that entrepreneurs protect their inventions. This is a form of insurance. To attempt to market an invention without covering the work with the shield of patent, trademark, copyright or trade secret protection indicates a frivolous approach that will not succeed. Investors, licensees, and investors demand the protection that these intellectual property products afford. Even if the entrepreneur is going to self-market the invention, protection is essential in order to fend off competition.

A pharmacist in Atlanta, at the beginning of the 20th century, created a formula for syrup that he sold at the soda fountain in his pharmacy. John Pemberton mixed the syrup with soda water and sold drinks of the concoction as a wellness beverage to cure aches and pains. Mr. Pemberton had created Coca-Cola. He never anticipated that Coke would become an international comfort product, the soft drink. The smartest thing John Pemberton ever did, besides inventing Coca-Cola, was to handle the secret formula for the syrup as a Trade Secret. To this day, the Coca-Cola Bottling Company zealously protects the ingredients and chemistry involved in producing the base syrup that is the essence of classic Coca-Cola.

Big Boy Restaurants protects the recipe for the tartar sauce that goes on their sandwiches, and that many customers buy by the bottle and take home. McDonalds doggedly protects the process their restaurants utilize to cut, cook and season their French-fries. William Wrigley was just as manic in keeping secret his technique for delivering powerfully flavored, long lasting, chewing gum.

Trade Secrets typically are not able to secure patent protections. The novelty of the Trade Secret is in the blending, chemistry or chronology utilized to deliver the finished product. If you have such a recipe you will want to keep this knowledge very near, as it can become very dear. If the public knew the formula for Coca-Cola, quite possibly there would be a lot of consumers keen to blend their own drink at home. Coke would not like that!

If your product has the potential and necessity to become a Trade Secret you will want to follow several very basic steps. First, write down every event related to the development of the formula. Keep a logbook with the data, dates and details of your work. As you finalize your development work memorialize all of the steps essential to delivering the finished product you wish to keep secret in a recipe or summary document. Then store in a very secure place (a safety deposit box, or safe) all of the work product and the recipe or formula.

The Trade Secret gains incredible asset value when your product becomes a market success. Selling a business built around a fully protected Trade Secret exponentially increases the value of the company. Coca-Cola, Betty Crocker, Duncan Hines, Oil of Olay, Schlitz, Dom Perignon, Ben and Jerry’s and Estee Lauder’s Youth Dew are only a few examples of famous brands built around a Trade Secret.

A Trademark is important in developing brand awareness for a product. Use a Patent Attorney when approaching the highly specialized area of seeking Trademark protection. I have never seen an entrepreneur successfully navigate the very complex workings of the USPTO. I HAVE seen many attempts to handle the process, all resulting in complete failure.

The content of a Trademark can include a customized, identifying icon, stylized brand name and a branding statement. Nike uses the famous slash (icon) the Company’s name (recognizable stylized font) and “Just Do It!” (branding statement). Include all of the elements that the public will recognize in your Trademark application. 

Look around at local, regional, national and international companies and brands that you see every day. Pat’s Cheese Steaks in Philadelphia is a local business that has gained great fame and brand recognition and protects their brand with a trademark. It is a destination for visitors to Philly. Chanel, the French haute couture brand, is internationally revered and the classic “C” that adorns every unit of Chanel product is one of the most recognized brand icons in the world. Truly Nolen, the national pest removal service, trademarks the mouse ears seen on every piece of sales collateral, advertisement and service vehicle the Company uses.

Owning a Trademark confers an obligation to police and protect the assigned mark. The inclusion of ™ on every unit of product is essential. Again, consult an attorney. Trademarks can inadvertently become vacated and lost. 

Copyrights are utilized to protect intellectual property. Movie content, poetry, music, books and plays are copyrighted. We have worked with clients on a number of video and board games. We always copyright the rules and/or the play features of the game.

Recently, Dan Brown, the writer of the wildly successful book the “The Da Vinci Code”, was suited for plagiarism by the British authors of a book about the search for the Holy Grail. The search for the Holy Grail is central to the plot of the “The Da Vinci Code”. There are full library shelves devoted to the search for the mystical Holy Grail. And yet, during the run-up to the movie release of “The Da Vinci Code” a legal action involving this intellectual property was commenced. Brown and his publisher vigorously defended their rights under their Copyright protection. They won full vindication from the court.

Producers of intellectual content properties (movie studios, record labels, book publishers) are very hesitant to accept unsolicited proposals for review. “The Da Vinci Code” saga is the reason. Legal action is rife in the area of intellectual property. We all remember things that we saw, heard or experienced from the distant, but dim past. Regurgitating a variation of that experience may find its way to the written page. Voila, was this material plagiarized? 

Mattel and Hasbro will not review ANY outside toy submissions. Is it not coincidental that there has not been a breakthrough toy introduction in years from Hasbro or Mattel? This is one of the unfortunate byproducts of a litigious society, the limits placed on needed innovations. Protect your intellectual property with a Copyright.

I recommend to my clients, before spending a dime on a patent attorney, that they perform a cursory search at the USPTO.Gov web-site by providing all obvious key words applicable to their invention. If a number of patented products come up, and they are spot-on their idea, the item might not be a candidate for a filing. If the field seems open and clean, then I advise hiring the patent attorney to conduct a professional, thorough search. The in-depth search will confirm the potential for successfully obtaining patent protection.

Patents are the preferred style of protection for most inventors and entrepreneurs. Patents (utility) are very powerful agents of defense against predators, thieves and knock off artists. Not to be a boor, but, again, utilize the services of a patent attorney. I am always amazed and amused at how many people think they can successfully write, provide highly specific 3-D CAD art, file, handle USPTO objections and move the patent through the labyrinth of a Federal Government bureaucracy. Go Figure! They waste time and money, and usually negate any opportunity to have a re-filed patent successfully obtain a patent number. 

The Provisional Patent filing is basically a letter that is placed on file with the USPTO. The Provisional filing advises the USPTO of the description of the product you are attempting to develop. The letter has a one-year life cycle and must be extended with a formal patent filing (Utility or Design) or the product is vacated forever. 

We utilize the Provisional Patent as a fully legal way to state that a product in early stage development is Patent Pending. This filing is also very inexpensive relative to a design or utility patent. A Provisional Patent filing also enables the entrepreneur to have a one year time window to test and gauge market response to the invention. If reaction is positive, then it reinforces the necessity of continuing to devote assets to further development of the opportunity.

The Design Patent simply covers art features noted in the application. This is the weakest form of patent protection. A competitor only needs to change a design element, cosmetic feature or add an artisan variant to overcome a Design Patent. However, for products that have real commercial potential, but cannot overcome prior, existing product art to obtain a Utility Patent, the Design Patent offers one potentially important benefit: the option to keep a product suspended in ongoing Patent Pending status.

We have done this on a number of occasions. A simple amendment to the initial filing means that a bureaucrat at the USPTO must find the file, pick it up, insert the amended filing detail and re-log the filing. As a result the filing goes to the back of the line and we gain months more Patent Pending protection. 

Why go through all of this? When a product is in Patent pending mode it has ultimate protection. When a patent number is issued the clock starts ticking on the effective life of protection and details of the novelty of the patented product become public knowledge. Your product is obviated. It can be amazingly simple for the less than scrupulous knock off artist to engineer around your inventions unique features and benefits. 

By keeping a product in Patent pending limbo we keep the features shrouded from any public awareness. This often leads to a first to market advantage and competition is only aware that there is a Patent pending. The added time that the product obtains, to build and extend sales traction, and begin the branding process is exponentially more valuable than the legal fees required to keep adding elementary addenda to the Design filing. You want to be first to market, and have as much time as possible to stand-alone in a market. 

The Utility Patent is exceedingly valuable, both as a protective shield against competition and as a business asset. The invention that receives a Utility Patent number from the USPTO is potentially of interest to licensees, partners, investors and venture capital. Most patented products (Utility), however, never make it to market. We often see inventions that are novel, and thus patent possible, but not commercial, or needed, or beneficial. We all know a mad scientist or two, with endless designs, inventions and patents, none of which are ever going to be a market success.

The Utility Patent protects the novel features and benefits that the application describes in great detail. The patent attorney will narrate the unique aspects of your invention. They will also mention other patents near your space but painstakingly note the differences inherent to your invention. In addition, a great deal of effort will be devoted to creating 3-D Computer Assisted Design art that portrays your product from every possible angle and graphically depicts the uniqueness of your product.

Utility Patent filings rarely sail though the USPTO without being challenged. A competent patent attorney often anticipates the weakness in a filing and has a sheath of retorts ready to address the examiners concerns and questions. This re-directs the file back into the bureaucracy at USPTO. I tell my clients that they can expect up to an 18-month wait before receiving notice of the USPTO decision. However, on several complex filings, I have seen the process take up to six years.

Believe me, it is worth the work, the wait and the investment if a successful outcome from the USPTO is achieved. A Utility Patent conveys gravitas. The invention has stood up to the most stringent scrutiny and been accorded the most highly desired verdict: this invention has import.