1. 1 UNIVERSITY OF PENNSYLVANIA ESE Senior Design Lecture Laboratory Notebooks and Patent Protection of Intellectual Property September 21 2011 William H. Murray, Esq William H. Murray, Esq irishbillmurray@comcast.net irishbillmurray@comcast.net

2. 2 Protectable Intellectual Property Product of human intellect that is: Unique Unique Unobvious Unobvious Has value Has value

3. 3 Basic Forms of Protection of Intellectual Property Patent Patent Trademark Trademark Copyright Copyright Trade Secret Trade Secret

4. 4 Patent Protection Patent owners granted the right under U. S. patent law (35 USC) to exclude others from Patent owners granted the right under U. S. patent law (35 USC) to exclude others from Making Making Selling or offering to sell Selling or offering to sell Using Using Importing into the US Importing into the US the patented invention

5. 5 Patent Protection (cont) The grant is the right to exclude only. The grant is the right to exclude only. Not the right to practice the patented invention Not the right to practice the patented invention Example: Patents on improvements to the patented invention of another Example: Patents on improvements to the patented invention of another Has exclusive rights to improvement but cannot practice the combination of the basic invention and the improvement without permission of owner of patent on the basic invention Has exclusive rights to improvement but cannot practice the combination of the basic invention and the improvement without permission of owner of patent on the basic invention

6. 6 Foreign Patent Protection The grant conveyed by a United States patent is the right to exclude others from making, using and selling only in the US. The grant conveyed by a United States patent is the right to exclude others from making, using and selling only in the US. One must apply for patent protection in those foreign countries where such protection is desired. One must apply for patent protection in those foreign countries where such protection is desired. Patent protection cannot be obtained in most foreign countries if the invention has been publicly disclosed or used before the earliest patent application filing date. Patent protection cannot be obtained in most foreign countries if the invention has been publicly disclosed or used before the earliest patent application filing date. Foreign patent applications must be filed within 12 months of the US filing date in order to obtain benefit of the earlier US filing date. Foreign patent applications must be filed within 12 months of the US filing date in order to obtain benefit of the earlier US filing date.

7. 7 Recognizing the Need for Patent Protection Patent rights should be assessed for creative activities such as: Patent rights should be assessed for creative activities such as: Design and development of new processes, machines, articles of manufacture and compositions of matter Design and development of new processes, machines, articles of manufacture and compositions of matter Software Software Manufacturing methods Manufacturing methods

8. 8 Preserving Patent Rights in the US United States Patents Are Awarded to the First Inventor – FOR NOW United States Patents Are Awarded to the First Inventor – FOR NOW The first inventor is the one first conceives and reduces the invention to practice. The first inventor is the one first conceives and reduces the invention to practice. New America Invents Act – Patents Are Awarded to the First Inventor to File New America Invents Act – Patents Are Awarded to the First Inventor to File Effective Date –Upon expiration of the 18-month period beginning on the date of enactment of this Act. Effective Date –Upon expiration of the 18-month period beginning on the date of enactment of this Act.

9. 9 Preserving Patent Rights in the US (cont) America Invents Act America Invents Act Under the first to file regime Under the first to file regime First to invent (§102(g)) and interference (§135) provisions have been repealed. First to invent (§102(g)) and interference (§135) provisions have been repealed. considerations of diligence, abandonment, suppression an concealment no longer relevant considerations of diligence, abandonment, suppression an concealment no longer relevant Derivation is an important issue regarding first to file Derivation is an important issue regarding first to file Disclosures appearing in applications and patents shall not be considered prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor (proposed §102(b)(2)(A)). Disclosures appearing in applications and patents shall not be considered prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor (proposed §102(b)(2)(A)).

10. 10 Preserving Patent Rights in the US (cont) America Invents Act America Invents Act Derivation – there are two requirements necessary to establish Derivation – there are two requirements necessary to establish First - a prior, complete conception of the claimed subject matter, and First - a prior, complete conception of the claimed subject matter, and Second - communication of the complete concept to the party charged with derivation Second - communication of the complete concept to the party charged with derivation

11. 11 Preserving Patent Rights in the US (cont) America Invents Act America Invents Act Corroboration – proof of complete conception cannot be established with the prior inventor’s testimony alone Corroboration – proof of complete conception cannot be established with the prior inventor’s testimony alone The one charging derivation must present corroborating evidence of prior conception The one charging derivation must present corroborating evidence of prior conception Adequate corroborative evidence includes physical, documentary or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party. Adequate corroborative evidence includes physical, documentary or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party.

12. 12 Preserving Patent Rights in the US (cont) Who Is An Inventor? Who Is An Inventor? One who contributes to the conception of the claimed invention. One who contributes to the conception of the claimed invention. Conception is the formation of a definite and permanent idea of the complete and operative invention. Conception is the formation of a definite and permanent idea of the complete and operative invention. The idea must be sufficiently detailed that the inventor could describe all of the elements of the invention in a manner that would permit one of ordinary skill to understand and then reduce the invention to practice without undue experimentation The idea must be sufficiently detailed that the inventor could describe all of the elements of the invention in a manner that would permit one of ordinary skill to understand and then reduce the invention to practice without undue experimentation

13. 13 Preserving Patent Rights in the US (cont) Who Is An Inventor? (cont) Who Is An Inventor? (cont) A joint inventor is one whose contribution to the conception of the claimed invention is not insignificant in quality, when that contribution is measured against the dimension of the full invention. A joint inventor is one whose contribution to the conception of the claimed invention is not insignificant in quality, when that contribution is measured against the dimension of the full invention. The principle of joint inventorship contemplates some form of collaboration or concerted effort between inventors. The principle of joint inventorship contemplates some form of collaboration or concerted effort between inventors. Joint inventorship can be based upon contribution to a single claim. Joint inventorship can be based upon contribution to a single claim.

14. 14 Preserving Patent Rights in the US (cont) Conception Conception Rules of Conception: Rules of Conception: To show conception, an inventor must present proof showing recognition or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention. To show conception, an inventor must present proof showing recognition or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention. Conception does not occur until the inventive idea is crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art Conception does not occur until the inventive idea is crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art

15. 15 Preserving Patent Rights in the US (cont) Reduction to Practice Reduction to Practice Standard test – does the embodiment relied upon for proof of reduction to practice actually work for its intended purpose? Standard test – does the embodiment relied upon for proof of reduction to practice actually work for its intended purpose? Simple inventions – some inventions are so simple and their purpose and efficacy so obvious that construction is sufficient to demonstrate their workability. Simple inventions – some inventions are so simple and their purpose and efficacy so obvious that construction is sufficient to demonstrate their workability. Commercial viability – no requirement that an invention be commercialized in order for it to be reduced to practice. Commercial viability – no requirement that an invention be commercialized in order for it to be reduced to practice.

16. 16 Preserving Patent Rights in the US (cont) Proof of conception and reduction to practice requires corroboration with contemporaneous evidence. Proof of conception and reduction to practice requires corroboration with contemporaneous evidence. An important form of the required corroboration is typically provided by laboratory notebooks which contain contemporaneous entries of the work performed. An important form of the required corroboration is typically provided by laboratory notebooks which contain contemporaneous entries of the work performed.

17. 17 Preserving Patent Rights in the US (cont) Laboratory Notebooks Laboratory Notebooks What Is A Laboratory Notebook? What Is A Laboratory Notebook? Permanent record of what was done for each task or project maintained in chronological order. Permanent record of what was done for each task or project maintained in chronological order. Documents all research, experiments, procedures and results. Documents all research, experiments, procedures and results.

18. 18 Preserving Patent Rights in the US (cont) Laboratory Notebooks (cont) Laboratory Notebooks (cont) Preferably bound notebooks with numbered pages. Preferably bound notebooks with numbered pages. Should be kept by everyone whose work involves innovation and creativity. Should be kept by everyone whose work involves innovation and creativity. Entries should be made contemporaneously as the work is performed and maintained in chronological order. Entries should be made contemporaneously as the work is performed and maintained in chronological order. Each page should be signed and dated by the inventor and should be signed by a witness who understands the entries. Each page should be signed and dated by the inventor and should be signed by a witness who understands the entries. Thus, each page of the laboratory notebook preferably contains the following notation in addition to the signature of the person performing the work and the date the entry was made: Thus, each page of the laboratory notebook preferably contains the following notation in addition to the signature of the person performing the work and the date the entry was made: “Witnessed and understood by: “Witnessed and understood by: _______________________ Date: ____________ _______________________ Date: ____________

19. 19 Preserving Patent Rights in the US (cont) Laboratory Notebook Entries Laboratory Notebook Entries Identify task or project Identify task or project Record everything related to that task or project Record everything related to that task or project Entries should be as descriptive as possible including sketches if required to provide a detailed understanding of the entry Entries should be as descriptive as possible including sketches if required to provide a detailed understanding of the entry All entries should be dated, legible, factual information and data, both qualitative and quantitative All entries should be dated, legible, factual information and data, both qualitative and quantitative

20. 20 Preserving Patent Rights in the US (cont) Laboratory Notebooks (cont) Laboratory Notebooks (cont) CAUTION CAUTION Never erase entries – place a line through an entry to be deleted, leaving the underlying material legible Never erase entries – place a line through an entry to be deleted, leaving the underlying material legible Never remove pages Never remove pages Never leave a page totally blank Never leave a page totally blank

21. 21 Preserving Patent Rights in the US (cont) Laboratory Notebooks (cont) Laboratory Notebooks (cont) Provide a permanent, chronological record of research which Provide a permanent, chronological record of research which document what was done during the course of a task or project document what was done during the course of a task or project establish what inventions were made, when and by whom establish what inventions were made, when and by whom can provide credible evidence of inventorship when properly corroborated can provide credible evidence of inventorship when properly corroborated important when issues of derivation arise important when issues of derivation arise

22. 22 Preserving Patent Rights in the US (cont) Laboratory Notebooks (cont) Laboratory Notebooks (cont) Why Are They Important? Why Are They Important? Can be used to provide dates of conception and reduction to practice Can be used to provide dates of conception and reduction to practice Can be extremely important if an allegation of derivation is made Can be extremely important if an allegation of derivation is made chronological detailed factual entries can be used later to provide the date of invention chronological detailed factual entries can be used later to provide the date of invention witnesses can later provide corroborating testimony witnesses can later provide corroborating testimony

23. 23 Preserving Patent Rights in the US (cont) In addition to conscientiously maintaining an laboratory notebook, avoid public disclosure of invention before patent application is filed. In addition to conscientiously maintaining an laboratory notebook, avoid public disclosure of invention before patent application is filed. Although there is a one year grace period in the United States for filing a patent application after a public disclosure is made, there is no grace period in the other major industrialized countries of the world. Although there is a one year grace period in the United States for filing a patent application after a public disclosure is made, there is no grace period in the other major industrialized countries of the world.

24. 24 REMEMBER Document acts of invention Document acts of invention Diligently maintain a laboratory notebook Diligently maintain a laboratory notebook Document work chronologically Document work chronologically Sign and date each page Sign and date each page Have each page signed and dated by a witness Have each page signed and dated by a witness Can provide important evidence regarding conception and corroboration in deciding derivation issues Can provide important evidence regarding conception and corroboration in deciding derivation issues File US patent application promptly File US patent application promptly Can be determinative of patent rights in the first to file regime under the America Invents Act Can be determinative of patent rights in the first to file regime under the America Invents Act

25. 25 Electronic Lab Notebooks The courts have long recognized that traditional, hard bound paper laboratory notebooks can be the source of reliable, credible documentary evidence. However, as with most technology, the law lags advances, even those readily understood and accepted by the scientific community. For example: The courts have long recognized that traditional, hard bound paper laboratory notebooks can be the source of reliable, credible documentary evidence. However, as with most technology, the law lags advances, even those readily understood and accepted by the scientific community. For example: results of breathalyzers finally deemed sufficiently reliable as a reliable indicator of intoxication results of breathalyzers finally deemed sufficiently reliable as a reliable indicator of intoxication On the other hand lie detector results are still deemed inadmissible in a number of jurisdictions On the other hand lie detector results are still deemed inadmissible in a number of jurisdictions Electronic records will, at one point, be universally recognized as reliable documentary evidence. However, in an abundance of caution, it is highly advisable that invention records also be kept in the traditional notebook form, which has traditionally been admitted into evidence, until the law catches up with the technology. Electronic records will, at one point, be universally recognized as reliable documentary evidence. However, in an abundance of caution, it is highly advisable that invention records also be kept in the traditional notebook form, which has traditionally been admitted into evidence, until the law catches up with the technology.

26. 26 QUESTIONS ?