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TechRoadmap Directions
  IP Issues of Interest to High Tech Companies
Vol 3 Issue 1 January 2003

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Holiday Contribution in Lieu of Cards Follow Up

Wear Your IP Seatbelt

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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  Welcome!!
Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Most companies see value in protecting their intellectual property, usually in the form of patents. Yet these same companies sometime resist using laboratory or invention notebooks, typically citing how they interfere with their engineers' productivity, spontaneity, or style of work. The article "Wear Your IP Seatbelt" provides an example of why your patent attorney will push you to be serious about a notebook system.
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  • Holiday Contribution in Lieu of Cards Follow Up
  Last month TechRoadmap Directions made a contribution of $1/subscriber to the Greater Boston Food Bank. A number of our readers took us up on our offer to increase our donation for each referred friend who subscribed before 1/15/03, so we will increase our donation accordingly. Thank you. You are encouraged to use the link below to make your own contribution.

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  • Wear Your IP Seatbelt
  The significance of your patents only becomes evident when someone wants to invalidate them. Sometimes that party is a competitor who wants to practice your invention royalty free and sometimes that party is another inventor who believes the invention rightly belongs to them. These situations may only come rarely, but you need to be protected when they happen. The only way to establish your right to the invention in question is through documented facts - documentation best provided by a laboratory or invention notebook. To see how a notebook can protect you...read on...

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  • Tip of the Month
 
Try to make a notebook system part of your daily operation of research, development, and manufacturing engineering. What to include?
  • Evidence of Conception - Many engineers like to work on concepts in their heads and only describe their invention when it is "complete" By doing so, they may lose a priority date battle. Try to record ideas as they occur, with as much detail as you have.
  • Diligent Pursuit - Even if you are the first to conceive of an invention you can lose your right to it if you "abandon" it for a period of time, during which someone else independently conceives and demonstrates the invention. By including all your activities in your notebook you have the best chance of proving you didn't abandon your invention, even if you did not work on it continuously.
  • Reduction to Practice - Most engineers are good at recording the moment when things finally fall into place, but the best way to validate the date on which reduction to practice occurred is by having the data naturally embedded in the record of work leading up to that day.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to this same article in the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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  • Wear Your IP Seatbelt - continued
 

Many companies are filled with bright people who understand the importance of intellectual property to their firm's success. Yet these same people seem have tremendous difficulty grasping a fundamental tenet of good tactical IP management; the lab or invention notebook. Companies that are cavalier with their notebook management, or worse have no notebook system in place, have probably never had the validity of their patents challenged by an alleged infringer or their right to a patent denied in an interference procedure when they could not prove priority. Building an IP portfolio without good lab notebook backup is like driving without your seatbelt; it may be more comfortable to drive unbelted but the day you are saved from going through the windshield you'll be glad you bothered.

When a patent covers an invention of high commercial value your competitors will probe every avenue of inquiry to wrest your patent rights away. In a recent Court of Appeals case, inventor Scott Jolley, of Lubrizol Corp. failed in his attempt to gain invention priority over Phillip McGraw et al. of Dow Chemical Co. Dow places high value on their documentation system. Had McGraw worked for a less interested company, his patent might now be just a memory.

The case involves a lubricant compatible with chlorine-free refrigerants - the environmentally friendly replacements for CFC's in auto and home air conditioners. Both Lubrizol and Dow were working to serve this market in the late 1980's; Jolley filed a patent application in April of '89 while McGraw filed in October of the same year. As is the standard procedure, an interference hearing was held by the Board of Patent Appeals to determine which party was the "first to invent". During the hearing Jolley established a June 2, 1988 conception date with a reduction to practice on June 18th but McGraw established a May 20, 1988 conception date - less than 2 weeks earlier - coupled with diligence in reducing the invention to practice by September or October of 1988.

Jolley appealed the Board decision on two grounds: Dow's evidence of conception was an email that (it was argued) was only a "research proposal", not the required "definite and permanent idea of the complete and operative invention", and, even if it were, Dow, Jolley claimed, did not work diligently to reduce it practice (note that Jolley took only 16 days to reduce-to-practice, while McGraw took 3 or 4 months).

The Appeals Court rejected both arguments, primarily because Dow had substantiating documentation and corroboration. The invention in the email was easily understood by non-inventors in the context of Dow's existing research as was corroborated by the inventor's supervisor. It was also significant to the court that Dow had documentation that the first experiments performed after the email were directed to the lubricants in question. Similarly, in showing reasonable diligence, the court noted "McGraw documented various activities...in pursuit of the alleged [plan for reducing the invention to practice]". The activities included "acquiring samples...and special glassware...conducting multiple tests" and replenishing supplies as needed. In sum, Dow produced evidence of a continuing inventive record wherein any gaps were due to "reasonable everyday problems and substantiated employment limitations", i.e., the inventors' other duties.

The key words here are "documented", "corroborated" and "substantiated". If you were testifying a decade after the fact about your company's "diligent" efforts to reduce an invention to practice, could you substantiate your testimony? While it is possible to reconstruct evidence from purchasing department records, employee time sheets, and departmental memos and emails (if archived), the lowly invention notebook - a hand written, daily record of activity, signed, dated and witnessed - makes it easy to defend your patent priority. If you are venturing out onto the IP highway, follow Dow's example and wear your IP seatbelt.

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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.