Since March 16, 2013, the United States has been under a first-inventor to-file patent system. Although it has always been good scientific practice for inventors to keep and maintain laboratory notebooks, it was all the more important in a first-to-invent patent system. In light of the recent changes in U.S. patent law, will keeping and maintaining a laboratory notebook have any importance for patent applications filed under the new system?
Previously, if there was a dispute as to which independent party was first-to-invent, laboratory notebook records, among other materials, were routinely accepted in interference proceedings (priority proceedings before the patent office) as evidence of conception, reduction to practice, and diligence. However, under the current system, an independent inventor who fails to file first has little recourse.
As such, are laboratory notebooks still relevant at all, in terms of U.S. patent law? Certainly. Although interference proceedings are no longer available, inventors (petitioners) may request a derivation proceeding with the USPTO. These are available in the limited circumstances where it can be proved that the first-to-file party derived the invention from the true inventor and did so without authorization. It is the petitioner’s burden to show, with substantial evidence and at least one affidavit, that communication of the invention to the alleged deriver, and an unauthorized filing of a patent application occurred. A properly maintained laboratory notebook, as well as other means, documenting such communications would be helpful in providing much of the substantial evidence required.
Apart from derivation proceedings, laboratory notebooks will still remain important for the purposes of determining or correcting inventorship, determining prior user rights, and for pre-March 16, 2013 application issues (1.131 declarations, Interferences, etc.), which will still be relevant for years to come.
In short, despite the change to a first-inventor-to-file patent system, laboratory notebooks are here to stay.
James J. Kang is an Apprentice in the Gibbons Intellectual Property Department. Estelle J. Tsevdos, a Director in the Gibbons Intellectual Property Department, co-authored this post.