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
this article on line.