A MESSAGE FROM THE DIRECTOR OF INTELLECTUAL PROPERTY ABOUT PAPER AND ELECTRONIC LABORATORY NOTEBOOKS

For several reasons, the proper keeping of a laboratory notebook is important. When kept properly it can provide evidence of the date of “conception” of the invention and of its “reduction to practice.” Conception is the formulation of every feature of the operative invention in a form that is clear, definite and permanent enough that it would take only ordinary skill in the art to reduce the invention to practice. Reduction to practice is the demonstration that the invention works for its intended purpose. Conception and reduction to practice can be used to prove “priority” (i.e. an earlier invention date) in the event a second inventor of the same “thing” is also seeking patent protection for it. It can also be used as a defense in the event that you could be accused of patent infringement. And, it can be used to establish the identity of the inventors and their respective contributions to the invention.

For such evidence to be admissible to prove priority, certain legal standards must be met. First, the inventor(s) testimony of conception and reduction to practice must be corroborated by independent evidence. (1) Second, an inventor’s own unwitnessed documentation cannot corroborate an inventor’s oral testimony about inventive facts.(2) Third, one joint inventor cannot corroborate another joint inventor’s testimony. Fourth, physical evidence does not require corroboration to demonstrate the content of the evidence itself.(3) Fifth, in the evaluation, all pertinent evidence is considered in determining the credibility of the inventor’s testimony, including circumstantial evidence of an independent nature.(4) The purpose of the rules is to prevent fraud(5) and that has to be kept in mind in creating the evidence and in evaluating the evidence.

What this morass of legal mumbo-jumbo means is that oral testimony has to be corroborated by the oral testimony of someone else who is not a co-inventor or by physical evidence such as a lab notebook witnessed by someone else who is not a co-inventor. However, physical evidence (such as data in lab notebooks, autoradiographs, infra-red and mass spectral analyses and the like) does not have to be corroborated.(6) The easiest, quickest, ultimately least time-consuming and least expensive way to do this has proven to be the keeping of a witnessed laboratory notebook.

In general, in keeping a laboratory notebook remember your grammar school “W”s: who suggested it; who did it; what was done; when it was done; why it was done; what were the results; and what conclusions were drawn. Specific, “good practice” rules are:

1. The notebook binding should be glued or sewn with the pages consecutively numbered. Never remove any pages.

2. The front cover should be signed and dated with the start date, and each page should be signed and dated as the page is completed.

3. Outline the objective and rationale of your experiment in a couple of sentences, a flow chart or the like.

4. Record lab meeting discussions, ideas and suggestions made by all attendees and the names of the people making them. This is fertile ground for establishing an early conception date.

5. Make entries in ink or other permanent marking and in chronological order -- no erasures, redactions or “white-outs.” Draw a single line or an “X” through any error.

6. If you have to leave an empty area, “X” through it, so that you can’t be accused of inserting something at a later date.

7. Record assay or protocol conditions in detail, including preferred operating conditions, preferred ranges and alternate or optional materials. Record all test results and explain the results. Make conclusions short and factually supported by the data. Don’t include opinions and commentary.

8. Each page should be witnessed by someone who understands the technology but who would not be a co-inventor: daily is best, weekly is fine, but even monthly will suffice.

9. Staple, paste or tape attachments of raw data in, or fit them in an envelope and attach the envelope to the notebook page. Sign and witness each, or sign and witness across the attachment and onto the page.

10. Provide a key to abbreviations and a table of contents.

Electronic laboratory notebooks have not been tested in patent litigation yet, so you are taking a risk keeping your data this way. If you insist on keeping your notebook in electronic form, here are some things you can do to increase the probability that your e-notebook will be admitted into evidence:

1. On a regular basis, make a permanent back-up copy on clearly labeled, “write once” media. Have your witness read your entries and enter his “read and understood by” name and date before you make the back-up. Alternatively, have your witness read the back-up copy and sign and date the label with “read and understood.” Make sure the label is permanent. Attach the disk in a lab notebook so that additional discs can be stored in the same place, in consecutive order, with the print-outs of your raw data.

2. Number the discs consecutively and make sure the start date of disc 2 is the day after the end date of disc 1, etc.

3. Date your entries daily or use a separate server that time-stamps your records. Use electronic signatures to sign your entries.

4. Secure your computer. Prevent any unauthorized access; use digital signature or encryption devices. Limit access to authorized personnel only. Limit distribution of stored information. Change your user codes and passwords regularly. Keep data on how frequently you check your system and change your codes.

Remember, the idea behind the legal rules is to prevent fraud; and adhering to the rules will provide you with protection from being accused of fraud. You need to be able to show that your records could not have been tampered with; that they were really made by you; that they were really witnessed by your witness and that the dates are genuine. If you can’t show that, they will not likely be admissible to prove any facts or corroborate any testimony.

Luann Cserr

Director of Intellectual Property

© Brown Technology Partnerships 2006

All Rights Reserved

Evidence of the inventive facts must not rest alone on the testimony of the inventor himself. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998).

Brown v. Barbacid, Doc. No. 00-1590 (Fed. Cir. January 25, 2006)

Id. at 9.

Loral Fairchild Corp. v. Toshiba Corp., Docket No. 00-1487 (Fed. Cir. January 25, 2006)

See Price v. Symsek, 988 F.2d 1187, 1194-95 (Fed. Cir. 1993)

It may require expert testimony to explain what it means.