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

Patents in the USA

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.

About the Author:

Rick Neifeld is a Ph.D. (in Physics) patent attorney and managing partner and President of Neifeld IP Law, PC, whose URL is www.Neifeld.com. Neifeld IP Law is located near the USPTO, and it specializes in U.S. and international patent protect ion, licensing, advise, and counseling, and specialty matters at the USPTO. Rick is also a patent interference practitioner, former Chair of the Interference Committee of the AIPLA, and co-owner of the patent related services provided at www.PatentValuePredictor.com.

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