US Lab Notebook requirements – proof of date of patentable invention
Most readers will be aware that, for several years now, it has been possible for non-US inventors to prove the date of invention through evidence in their laboratory notebooks. This allows an inventor to take advantage of the 'first to invent' rule under US patent law, whereas in other countries the first to file will usually take precedence
In simple terms, the significance of this is that if someone files a patent application in respect of the same invention before you, you may still be able to obtain patent protection in the US if you can prove that you invented the invention before they did.
This article provides a brief reminder of the two basic requirements for keeping laboratory notebooks to US standard.
First, the invention must be independently corroborated. This means that the notebook must be co-signed and dated by an independent witness. Such a witness must be able to understand the nature of the work, but must not be a co-inventor. Suitable witnesses include a supervisor (who is not a co-inventor) and a technician who assisted in the preparation of materials without making any inventive contribution.
The notebook should also be maintained as a permanent record. This means:
- it should be maintained in permanent ink (not pencil)
- it should be bound, with pages numbered sequentially
- it should be kept in an entire state (i.e no pages removed)
- any inserts (such as photographs of gels) should be securely affixed and also signed and dated by a suitable witness.
- it should be free of white out – ie all deletions should be struck out, not covered over
- changes should be initialled and dated by both the author and the witness.
The second requirement is that the notebook records must demonstrate the dates on which the invention was both 'conceived' (i.e first thought of) and 'reduced to practice' (i.e shown to work). The record must also show that, once the invention was conceived, it was then diligently reduced to practice. The record must clearly show the dates on which each of these milestones were achieved. The labbook should contain all relevant details of the invention, including the following
- development of ideas
- details of all experiments (even failed experiments), including aims, methodology, materials used, results obtained and discussions
- diary entries, meeting notes and progress reports
