Record-Keeping and Proving Inventorship

The American Invents Acts triggered a transition in the U.S. from a first-to-invent system to a first-inventor-to-file system. The importance of proving inventorship did not diminish with the transition, however. 35 U.S.C. 101 still reads: “Whoever invents or discovers…” In fact, proving inventorship will remain important for ownership, best mode, eligibility for prior art exceptions, duty of disclosure obligations, derivation proceedings, and antedating an asserted prior art reference in AIA post-grant proceedings, even after the period of coexistence between pre-AIA and AIA law ends on March 15, 2034 (and maybe 2039 with PTE. Consequently, keeping accurate, careful records of invention as evidence of conception and reduction to practice was, and remains, crucial.

Researchers should keep accurate records substantiating their work in developing an invention. The dates of conception, reduction to practice, and disclosure to others should top the list of dates practitioners seek to know when beginning to draft a patent application.

The test for conception focuses on whether the inventor had an idea that was definite and permanent enough so that one of ordinary skill could understand the invention.  Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).  Researchers should be encouraged to record ideas as well as experiments so that there exists a written record of conception.

Reduction to practice is the physical part of the inventive act. Constructive reduction to practice occurs simply by filing a complete patent application describing how to make and use the invention.  Actual reduction to practice occurs when the invention is physically made or practiced.

The first party to conceive the invention and reduce it to practice is generally deemed the “first to invent” in a priority contest. If one party conceives of the invention first, but reduces it to practice after the second party, the first party may still be considered the first inventor based on a successful showing of diligence ̶ the exercise of reasonable and continuous effort by the inventor from the date of conception to the date of reduction to practice. See, e.g., English v. Ausnit, 38 U.S.P.Q.2d at 1638; Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996) ("Where a party is first to conceive but second to reduce to practice, that party must demonstrate reasonable diligence toward reduction to practice from a date just prior to the other party's conception to its reduction to practice."). Having the records to substantiate diligence during the relevant period may mean the difference between dealing with an alleged prior art patent or publication or not having to deal with the reference at all.

If an inventor or alleged co-inventor tries to prove conception and actual reduction to practice, testimony regarding conception, actual reduction to practice, and diligence should be “corroborated” by independent evidence. "The purpose of the rule requiring corroboration is to prevent fraud." Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (citation omitted). The inventor’s word alone is simply not enough. Some independent testimony of a non-inventor proving that the activities described actually occurred should corroborate the story.

To prove the dates an invention was conceived and reduced to practice, researchers should keep accurate and contemporaneous factual records of their work. Such written records, if properly dated and witnessed, can be useful documentary evidence and help prove dates when conception and reduction to practice occurred. Laboratory records are generally useful as evidence if they are kept in a permanent, complete, and continuous form with no space skipped.  Other types of evidence, such as letters, memoranda, grant applications, draft manuscripts, and even purchase orders can all also provide relevant evidence of a date of invention. The most important evidence of invention, however, may turn out to be the laboratory notebook, whether manual or electronic.

In fact, the electronic lab notebook is standard in many fields of scientific recordkeeping. The touchstones, as for any record, are authenticity and reliability. For electronic records to be effective evidence, the party relying on the electronic record must show the trier of fact that the electronic evidence is authentic and reliable. Many companies have an explicit policy governing treatment of electronically recorded data.