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TechRoadmap Directions
Intellectual Property Issues for High Tech Companies
Vol 4 Issue 1 January 2004

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"Where's My Holiday Card?" redux

Don't Pat(ent) Yourself on the Back

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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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)

Welcome!! Happy New Year! Time to make a New Year's resolution. We often - too often some might say - urged you be diligent in maintaining a lab/invention notebook. And just as often, probably, you've ignored that exhortation. Now that it's the new year, make a resolution to make a good faith effort to maintain your lab notebook. And while your at it, if your company doesn't have (or follow) a policy for maintaining laboratory notebooks, well, make a resolution to get "them" to do so. For another example of why an inventor's own testimony is of limited value, read "Don't Pat(ent) Yourself on the Back".
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  • "Where's My Holiday Card?" redux
  • IT'S NOT TOO LATE! Use the link below to make a contribution to the Greater Boston Food Bank.

    Make your own GBFB contribtion here.


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  • Don't Pat(ent) Yourself on the Back
  • Keeping a lab or invention notebook is strikes many engineers as a waste of time; nobody, they think, will ever look at the entries. And for the most part they are correct. Company management also often takes the easy road, setting up a notebook policy but never providing an infrastructure to encourage compliance. Years go by and the notebooks gather dust.

    Unfortunately these companies and their engineers have lost sight of why keeping a lab notebook is important. Having and complying with lab notebook policies is like having automobile insurance; you never see a direct benefit until one of your patent applications crashes and burns.

    Consider a recent case decided by the Court of Appeals for the Federal Circuit. Through a complicated series of applications, continuations, claim amendments and cancellations, a inventor (Chen) at Bristol Meyers Squibb (BMS) found himself the "junior" party in an interference proceeding - that is, someone else beat him to the patent office - and to be awarded the patent he now had to established by a preponderance of the evidence that he had conceived the invention first and had worked diligently to reduce it to practice.

    Chen's primary evidence was his own lab notebook and the lab notebook of a laboratory assistant (Wei) . Unfortunately Chen never called upon Wei to testify to the validity of her notebook; nor were any of the witnesses called to testify (you know, the ones who sign "read and understood"); nor did Chen present evidence that BMS's notebook policy would ensure the validity of the notebooks.

    Basically Chen-the-witness was the only person testifying about the actions of Chen-the-inventor.

    Both the Board of Patent Appeals and the CAFC rejected Chen's attempt to win priority. As the CAFC said, "While notebook records are obviously of prime importance in proving the elements of invention, the failure of the notebooks' alleged author to testify; the fact that it was not established on the record that those notebooks were actually the notebooks of Wei, except by the circular testimony of Chen, whose activity was what was intended to be corroborated by the notebooks; and the lack of evidence of Bristol- Myers Squibb's policies regarding maintenance of laboratory notebooks, all compel affirmance of the Board's decision to exclude the notebooks".

    In other words, a pat on the back may feel good, but it really doesn't count if you do it to yourself.

    When you fill in a lab notebook, don't think of yourself as making a record of your invention development; instead, think of yourself as preparing legal evidence for a judicial or quasi-judicial proceeding. Every "best practice" we suggest to our clients is intended to make the validity of their notebooks as transparent as possible and to make swearing by the facts easy to do, even years after the entries were made.

    Read this article on line.

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  • Tip of the Month
  • Your company as a whole, and you as individual inventor, should be diligent in maintaining lab notebooks:
    • Make all notebook holders aware that they are creating legal evidence - The patent system relies on the notebook to make critical inventorship decisions. If the evidentiary trail is broken, the evidence is of little use.

    • Sign each page and get a witness to sign - Corroborating your inventorship claims with a witness is a virtual requirement

    • Company-wide enforcement of notebook procedures are important - If your witness is unavailable, a company procedure that enforced policy is a credible corroboration backup
    On-line version of the Tip of the Month

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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
  • Industry's Best Glossary
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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.

     
     


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