For the Record
Q: Do I need to make a written record of my invention's progress to protect myself? How do I do this?
A: Although it's very desirable to create written records of your invention's progress, you don't need to do so because you may never have to rely on them. But I strongly advise creating records because they can save your invention in certain situations-so you may be eternally glad you did so.
The records can be essential in several situations:
1. Swearing behind: If the U.S. Patent and Trademark Office (PTO) cites a prior patent or other publication against your application, you can often use your records to "swear behind" this publication and thereby eliminate it from use against you.
2. Inventorship disputes: Closely related to the above example are inventorship disputes-situations where two persons usually working for the same organization (one may be your supervisor) both claim to have created the invention. The inventor with records or with earlier records will obviously be able to convince the other inventor or management that he or she was the first or legitimate inventor.
3. Interferences: If you and another applicant file patent applications on the same invention and the two filing dates are close, the PTO will declare an "interference" between both applicants to determine who gets "priority," or who is entitled to the patent. They'll award the patent to the first person to "reduce it to practice" (build and test it or file a patent application), unless the other party conceived of it first and was diligent in reducing it to practice. Naturally, good records of conception and building and testing will be crucial here, too.
Here's how and when should you create the records:
Upon conception. As soon as you think up an invention, you should write out a description of your brainchild and, sign and date it as inventor. Then below your signature, write, "The above confidential information is witnessed and understood" and get two disinterested persons (friends or co-workers, but not your spouse) to sign and date it. The description can include sketches and doesn't need to be well-written-just clear enough so anyone who may have to rule on your invention can verify you conceived the invention as of the date written.
You shouldn't use a notary (they just confirm your identity) or mail a copy to yourself (the PTO gives post-office patents very little weight). The description can be handwritten as long as it's clear. If you type it up on your computer, you should print a copy and get the signatures on paper. Keep the original in a safe place, and don't show or send any copies of it unless the recipient has a "need to know."
Building and testing. You don't have to build it and test it to apply for a patent, but it's a good idea to do so. You'll understand it better, and your prototype will help you sell it. Make a similar signed and witnessed record of your building and testing. Include photos and performance figures if possible. If you get any receipts or generate any correspondence in the course of your building and testing, keep this paperwork also.
So to protect and preserve your rights, it's vital to keep signed, dated and witnessed records of your invention and its progress from conception to the prototype or patent application filing.
David Pressman, a practicing intellectual property attorney, is author of the bestselling book Patent It Yourself and the interactive software program Patent It Yourself, both published by Nolo Press. Formerly an electronic engineer, David has more than 30 years' experience in the patent profession-as a patent examiner, a columnist for EDN Magazine and a patent law instructor at San Francisco State University. Patent It Yourself can be obtained in bookstores (brick-and-mortar and online), from the publisher (www.nolo.com) and through David's Web site (www.PatentItYourself.com).
The opinions expressed in this column are those of the author, not of Entrepreneur.com. All answers are intended to be general in nature, without regard to specific geographical areas or circumstances, and should only be relied upon after consulting an appropriate expert, such as an attorney or accountant.
For reprints and licensing questions, click here.