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Inventor Notebook

The Continued Importance of Keeping an Inventor’s Notebook Even after the America Invents Act’s First to File Rule

Traditionally, Miami patent lawyers have always touted and recommended that inventors keep and maintain notebooks with regard to their toils – including but not limited to laboratory tests, experimental uses, prototypes, and related efforts to conceive and then later reduce to practice their inventions. These notebooks were preferably bound with consecutively numbered pages. Inventors were asked by registered patent attorneys to keep the first few pages blank – so that after an invention had been finalized – they could create a table of contents – and then maintain that bound notebook in a safe place.

            These inventors notebooks, if properly maintained, updated, witnesses, and signed – could later be used by the inventors – both during prosecution of their underlying inventions, or perhaps later during enforcement of their underlying patents – to help establish inventorship, priority, or even perhaps help defeat a piece of prior art (i.e., through swearing behind a reference).

       America Invents Act Under the March 16, 2013 implementation of the U.S. patent reform act often referred to as the America Invents ACT (AIA) – many inventors believed (quite falsely) that the time honored tradition of keeping well-maintained notebooks regarding their ideas and conceptions was no longer necessary. This is because under the AIA, an award of a patent will be based upon the first to file a patent application within the United States – rather than the previous method of awarding patents based upon who is first to conceive and reduce the invention to practice.

Commentators cite many continued advantages of keeping inventorship notebooks – even after the AIA and its first to file priority system:

            First, maintaining an inventorship notebook helps establish the integrity in the underlying conception of the invention. This includes, confirming who conceived (and therefore invented the patent application) – which is important in assessing validity of the underlying invention. Accordingly, great care should be used to maintain consistent chronology in these notebooks, including the names of those integral to the conception (and not necessarily the reduction to practice of the idea). Efforts should be taken not to leave gaps in such notebooks. A table of contents should still be added to a notebook after the inventorship has been concluded. Likewise proper headings should be used for each entry in the notebook – to show separate topics. Each entry should be corroborated by a third party (who is not the inventor(s)). That said, such third-party who signs off on the notebook should be someone with the requisite technical or scientific background to understand the underlying notebook entry.

            Second, hardcopy materials should be noted within the notebook and/or affixed. This will further help establish the lengths in which an inventor has gone to create the underlying idea. If a larger material is unable to be affixed / stapled to the notebook – then it should be referenced and described – and its location should likewise be identified. Smaller materials should preferably be affixed to the notebook – including pictures, graphics, charts, and related print outs. There should be dates for each such affixed material and a description.

            Third, general observations and steps to reduce to practice should be noted – in addition to the original conception of the invention (ie, the fundamental sketches, description of the concept, motivation of the concept, and searches of any prior art). This again will help showcase what the state of the art was at the time of the conception, the inventorship of the underlying idea, and the long but unfelt need solved.