NAIP Patent Blog

By Heidi Yeh, NAIP Engineer; Translated by Jeffrey Chang
Original Article Available Here (Chinese)
For a corporation, applying for a patent is an act of protection, an attempt to protect thousands, even millions of dollars spent in R&D. Today, corporations have increasingly been known to focus on internal knowledge management and stress the importance of keeping track of technological assets. They do this in no small part because when applying for patents, these records of research and development—in the form of the Laboratory Notebook—are powerful evidence. Therefore, to protect intellectual property, researchers, inventors and corporations should not overlook the importance of properly maintaining Laboratory Notebooks.


The Importance of the Laboratory Notebook

Two compelling reasons exist for maintaining a Laboratory Notebook:

1. When patent examiners cite prior art to reject the novelty of an invention, if a Laboratory Notebook has recorded the date of the invention's development as earlier than the published date of the cited prior art, that notebook becomes one of the strongest arguments for granting of a patent.

2. A well-maintained Laboratory Notebook is a thorough record of the research and development process. It includes what has been done, what needs to be done, what methods have not succeeded, frequency of testing, practicality of the research and more. All this aids in managing the status and progress of R&D.

Laboratory Notebooks in Different Patent Systems

In the United States, one of the few countries with a First-to-Invent system, three factors are essential in assessing first-to-invent claims. As listed in the USPTO MPEP § 2138.04-2138.06, they are:

1. Conception Date

2. Reduction to Practice

3. Reasonable Diligence

Reasonable Diligence is only used during litigation as evidence in determining First-to-Invent when the two parties are in conflict for the first two factors. In a First-to-Invent system, a decision to grant may therefore hinge solely on a Laboratory Notebook.

For a First-to-File system, Laboratory Notebooks may not seem as important, but they in fact play decisive roles—particularly in patent infringement suits. These notebooks can serve as evidence to prove that research results were achieved and perhaps published before the other party even filed a application.

Water may support a boat, but water can also capsize it. Laboratory Notebooks are no different, and they may be used both for and against you. Additionally, although Laboratory Notebooks seem irrefutable evidence, if they have not been properly maintained, they may be disregarded by the courts. In these situations, inventors and corporations may only stand by and watch helplessly has their rights slip away.

In this article, we have assembled and listed the critical factors in making a Laboratory Notebook acceptable for filing and litigation, as well as what should and should not be done when writing a laboratory notebook. Keep these matters in mind to ensure that one simple mistake won't cause your rights to vanish into thin air.



Recommendations on Maintaining a Laboratory Notebook

First, when do you begin a new Laboratory Notebook? Must one be kept from the very start of work until the very end? Actually, Laboratory Notebooks may be distinguished by work subject. As soon as you begin a different experiment or test, you can switch to a different or new notebook. For those researchers who work on multiple projects with similar technologies, this method prevents judges or juries from losing focus on the relevant invention, and might even save an invention from being seen as "Obvious".

Sometimes the results of an experiment inspire a new idea, yet there is no time to commit to testing or verifying it. At this time, record these new thoughts in a concept journal kept specifically for this purpose. When ready to begin exploration of the idea, use a new notebook and clearly note the origins of the concept and where it was recorded in the concept journal (date, page and line).

In addition to the above, when maintaining Laboratory Notebooks, be sure to take special note of the following:

1. When choosing a Laboratory Notebooks, choose a pre-bound notebook with pre-numbered pages. Even if the notebook pages are not numbered, do so yourself from the day a project begins. Avoid using loose-leaf notebooks or those with pages that easily tear-off to prevent any suspicion that any material was later inserted.

2. Make sure to sign and date the bottom of every page that contains any entries or notes. Additionally, each page should be verified and signed by another person (e.g. a researcher working on a different project) who understands and can attest to the validity of the work recorded.

3. Be sure to use a non-bleeding, ink-based pen to record the actual results of any work in the notebook. Avoid using pencil. After pages have been signed, do not alter or make corrections to the content. To make changes before pages have been signed, use a single line (or at most two) to cross out the incorrect information while ensuring it remains legible. Then sign and date next to the correction. For larger scale corrections, keep the original entry and, on the back of the page, note what is to be corrected and why. On the original entry make note of the correction and reference the page of the corrected entry.

4. Do not leave blank pages or large spaces. To distinguish between dates or work by pages, sign at the end of the last recorded entry and cross out any remaining blank spaces with a large X to prevent any new information from being recorded on the same page.

5. If the experiment results are computer-generated images, print out the results, date the print-out and affix it to the notebook page in a manner such that removing it will leave visible marks. Avoid large blank spaces around the edges of the print-out. If needed, mark the junction of the edges of the sheets of paper, then sign and date across the junction to increase the likelihood of it being acceptable as evidence.

6. All drawings, diagrams and graphs must be sequentially numbered and marked with an appropriately descriptive title. In order to assist in interpretation of the drawings, diagrams or graphs, use sequential numbers or letters of the alphabet to organize details and explanations.

7. Each day a witness must verify the recorded procedures and results, and sign to state that the entries are clearly understandable to another person who is skilled in the art. To be more cautious, have the witness also sign any corrections or amendments to ensure no other areas can be altered after the pages have been verified.

In addition to the suggestions above, any relevant or important information can be included in Laboratory Notebooks, such as machine model number, brands of materials, batch numbers and so on. The more detailed the entries, the more easily a non-researcher can effectively, efficiently understand the actual work and can repeat the results when necessary.

Don't Trip Over Your Own Feet

Laboratory Notebooks are effective tools for protecting IP rights. Therefore, there are a few things to watch out for when recording entries.

1. When commenting in entries, do not write "Not Patentable", "Obvious", "Unsuccessful" and similar comments that could be easy targets in a litigation case.

2. Avoid using words or phrases that may potentially limit interpretations, such as "the key to", "essential to", "invariably", etc….

In my time as a researcher, I learned the importance of properly maintaining a Laboratory Notebook. The nature of the work involved many complicated tables, graphs and drawings, yet after a year, during my assessment report, I was able to take out my notebook and quickly understand the details and main points. Therefore a Laboratory Notebook can not only provide an objective, organized system to record progress, it can also be a method to share experiences and discoveries.

Posted in: Engineers, Inventors, Lawyers | | |