Monthly Archives: February 2010

Inventor Notebooks : Implementing a Notebook Retention Program

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Inventor notebooks are commonly utilized to record all aspects of an inventors progress while developing and testing an invention.   Although an inventor’s notebook is not afforded any exclusionary rights similar to those enjoyed by a patent,  the inventor’s notebook may prove instrumental in establishing an earlier priority date (conception and reduction to practice) over another piece of art.   Additionally, inventor notebooks function as a sort of invention diary, allowing the Inventor to track their progress during the invention process.


Establishing Priority – Reduction to Practice

The Federal Circuit (CAFC) has held that “priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive of the invention and that it exercised reasonable diligence in later reducing that invention to practice.”   Accordingly, a patent applicant may establish “reduction to practice” either constructively or actually.   A “reduction to practice” (actual reduction) occurs in the context of an inventor’s notebook when an invention is constructed and successfully tested.

Filing a patent is considered a “constructive reduction to practice.”   Further, the application filing date is what is used by a patent examiner for determining the date of invention.    Alternatively, a party can also assert an “actual reduction to practice” (MPEP 2138.05 “Reduction to Practice” ) which requires: “(1) construction of an embodiment or performance of a process that met all the limitations of the interference count; (2) . . . determination that the invention would work for its intended purpose, ; and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events” as stated by the CAFC.   Accordingly, an Inventor’s notebook may assist an applicant in corroborating an actual reduction to practice.


Failure to Corroborate Evidence – Loss of Priority

In at least one case, the CAFC in Medichem, S.A. v. Rolabo, 437 F.3d 1157 (Fed. Cir. 2006) reversed the District Courts award of priority to the plaintiff because the Court determined that the inventor’s testimony was not corroborated by sufficient independent evidence.   In the present case, the point of contention involved the third prong (recited above) which requires independent evidence to corroborate an inventors testimony.

Although Medichem introduced documentary corroborating evidence, the court reasoned that the corroborative value of the inventors’ notebooks was minimal because they were not witnessed, and did not provide an “independent” source of authority on the issue of reduction to practice.   Further, the court stated that a non-inventors notebook has minimal corroborative value when the notebook is:  offered into evidence pursuant to authentication by an inventor; the notebook author(non-inventor)  did not testify at trial or otherwise attest to the notebooks authenticity; and “where the notebook has not been signed or witnessed and has not been maintained in reasonable accordance with good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances.”


Notebook Retention Program

Although a number of factors played a role in the courts decision to minimize the corroborative value of the proffered evidence, an important lesson can be extracted:  institute a formal notebook retention program within your organization.    By instituting a formal written program, an organization may be able to overcome any authenticity assertions that may arise concerning the genuineness of inventor records.    Some general ideas to help kick-start a notebook keeping program are included below for maintaining both physical and electronic notebooks.


Physical Notebooks

1)  Bound Notebooks:   The notebook should be bound – DO NOT use a binder with loose pages.

2)  Blue Ink: All entries (essentially anything written in the notebook) should be made using a blue ink pen for authenticity purposes –  DO NOT use pencil!

3)  Corrections:    If a correction needs to made, place a line through the item and initial/date the modification – never correct (or “white out”) a mistake using correcting fluid.

4)  Avoid Blank Spaces Between Entries:   One should avoid including blank space between entries in the notebook.   If blank space does exist between the entries, one should place angled lines through such areas (initial & date the area).

5)  Sign/Witness Each Page:   Ideally, each completed page should be signed/dated by the inventor; AND an individual who is disinterested and not a joint-inventor of the subject invention.   Further, the witness must have a level of skill within the respective art which allows them to understand the technical subject matter contained therein (for attestation purposes).

6)  DO NOT Modify Already Signed/Dated Pages:  Once a page has been signed/dated by all respective parties, no further modifications or insertions should be made.   Instead, additional pages or notebooks should be used to indicate which pages contain errors, etc.   However, if the page has not been signed/dated by the disinterested witness, the Inventor may further a correction as indicated above.  If corrections of signed and completed pages would be allowed, its possible that an authenticity issue could arise thereby jeopardizing the notebook retention program.

7)   Number Pages Sequentially:   All pages of the inventor’s notebook should be numbered sequentially.

8)   Do not remove pages from the notebook:   Pages should not be removed from the notebook to avoid the appearance of impropriety.

9)   Designate a Champion:   To help alleviate any authenticity concerns (and to add an oversight layer), its advisable to designate a champion (a person within the organization) the responsibility of ensuring that the organizations notebook retention program is properly maintained.  The champions duties could include:  ensuring that the inventor notebooks are not improperly accessed (maintaining confidentiality), indexing completed notebooks, controlling the release of the notebooks, etc.   Additionally, the champion could review the submitted inventor notebooks for adherence to the specifics of the notebook retention program.  Furthermore, in addition to maintaining exclusive control of the invention records, this individual chould additionally record the date/time that any notebook was checked-in/out.

10) Factual Details:   The inventor should view the inventor notebook as an unrestricted writing space in which they provide all of the factual details (e.g. drawings, components, materials, amounts/weights, test methods/results, etc.) pertaining to the invention, even those they consider as trivial.  Further, the inventor should be encouraged to provide substantial details in each of their notebook entries.  The level of detail included in each of the inventor notebook entries should allow an individual who is technically skilled within the subject art and unfamiliar with the particular invention to understand the particulars of the invention (e.g., what problem does the invention solve, how is the invention implemented, what items are used, what items were found through testing to make the invention inoperable, etc.).

11)  Collaborators:    If the Inventor is collaborating or working with others during the development of the invention, the notebook should:  include identifying information of the collaborator, describe the collaborators role(s) and indicate whether they contributed to any aspect of the invention.   It should be remembered that the general rule concerning inventorship is that an individual who contributes to the conception of the claimed invention should be included as a co-inventor of the patent application. (MPEP 2137.01 – Inventorship) Contrastingly, if an individual merely reduces the invention to practice (without contributing to conception) further to the direction of an inventor, this individual would likely be considered a technician rather than a co-inventor.

12)  One Notebook Per Invention:   It is generally not a good idea to place invention details related to multiple inventions in a single notebook.

13)  External Documents:    If an inventor reviewed or relied upon an external document during the invention process, a reference should be included within the notebook providing particularized details regarding the document source/date/relevant details/etc.  Additionally, the document should be included within the notebook or provided to the Champion for safekeeping purposes.

It should be noted that pre-printed inventor notebooks are available which include features such as bound permanent pages, identifier fields (title/project/etc.) on each of the pages, sequentially numbered pages, etc.


Electronic Notebooks

Further to the courts focus upon “good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances” in Medichem, it seems possible that an organization could satisfy this requirement by maintaining  electronic inventor records through a computer program.  This computer program would likely follow the principles enunciated above for physical inventor notebooks (e.g., designating a champion, secure check-in/check-out functionality, password security, etc).  Furthermore, I assume that physical printouts (monthly/quarterly) of inventor records coupled with a formal notebook retention program which provides secure inventory control would further the records genuineness.

Patent Claim Preambles: When is the Preamble Limiting?

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When do patent claim preambles limit a claim?   Should an Applicant merely recite the statutory classification in the preamble (e.g., “an apparatus comprising” or “a method comprising”) without anything further, or should the patent practitioner include a limited description of the invention along with a statement of purpose?   What about statements of purpose or intended use that are included in a claim preamble?

Overview / General Rule

The Federal Circuit has held that “No litmus test defines when a preamble limits claim scope.”    Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).    Instead, the court has held that whether to treat a preamble as a limitation is a determination “resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”  Id. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002).

The general “rule” (as indicated in MPEP 2111.02 – Effect of Preamble) is that a patent claim preamble limits a claim when the preamble  includes recitations limiting structure or when the preamble  “breaths life and meaning into the claim.”   Further, the Federal Circuit has held in at least one other case that a preamble may be limiting when the prosecution history indicates that the Applicant distinguished cited art on the basis of the citation in the preamble.    Bass Pro Trademarks v. Cabela’s (Fed. Cir. 2007).   Additionally, the preamble may be held as limiting if the specification or prosecution history of the subject application states that the recitation in the preamble is essential to the application.      Conversely, if the preamble recitation is only a statement related to the purpose or use of the claimed invention, the preamble recitation is usually not considered to limit the patent claim.

Recitations Limiting Structure – Limiting

Regarding the first limiting instance,  the aforementioned citation to the MPEP states, “any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).”    Accordingly, the preamble may be considered as limiting  when a recitation in the preamble of the claim provides antecedent support to recitations in the main body of the claim.

Statements Reciting Purpose or Intended Use – Not Limiting

The above citation to the MPEP additionally states, “the determination of whether preamble recitations are structural limitations or mere statements of purpose or use ‘can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’ Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).”

Preamble Drafting Strategies

A quick review of a number of patents reveals that there is no set or preferred method employed in drafting patent claim preambles. More specifically, while some patent claim preambles are drafted having a broad scope (e.g., “an apparatus comprising” or “a method comprising”), others are drafted with a more narrow scope with some specifics regarding the claimed invention, and possibly including language related to purpose or use.    I prefer employing a mix of the aforementioned approaches, drafting claim preambles with varied scope, and including at least one independent claim having a preamble with a broad scope (e.g., “an apparatus comprising”) during the claim drafting process.

My overall view is that essential claim recitations should preferably be recited only in the main body of the claim.  Failing to follow the aforementioned advice may result in unnecessary headaches during patent prosecution as many Examiners will not consider recitations included in the claim preamble as limitations of the claim. Additionally, as every term of a claim will be scrutinized during litigation, don’t include any language in the preamble which is unnecessary, as such language could be construed adversely against the Patentee.

Although there is persuasive authority as indicated above which describes various situations where a claim preamble is considered limiting, why risk having to assert this argument during patent prosecution, possibly generating unnecessary prosecution history estoppel and costs (monetary and time-related) for the client?