Record keeping for inventors and engineers

1. Record keeping for inventors and engineers Josiah Hernández

2. The IP commercialization process in the University • Research scientist work on R&D projects • Develop and perfect R&D and publish papers • Maintain inventor’s notebook • Meet with the POITT office to see potential for Patenting invention • Fill out invention disclosure form • POITT evaluates de invention disclosure and meets with inventors • POITT performs a prior art search • POITT decides which invention disclosures will pass to the patent filing stage • Invention that will be patented get passed to UPR Rio Piedras to start the patenting process with an attorney

3. Whose property is it? • Under UPR’s policy (Cert. 132, 2002-03) the University owns IP that is generated through research conducted with the use of its facilities and resources. • All royalties and most fees resulting from the IP are shared between UPR and the individuals involved in its discovery. • 33 1/3 % - inventor(s) • 56 2/3% - inventor’s UPR unit(s) • 10% - UPR special fund • Any remaining amount – will be used to support additional research and academic programs.

4. Determining Inventorship • An inventor is someone who contributes intellectually to the claimed invention • To determine inventorship, you must first determine what the invention is and then determine who contributed to making it • Often, inventorship is defined by negatives: An inventor is not someone who merely contributed non-inventive information. An inventor is also not someone who simply ran routine tests.

5. Record the Invention • Keep contemporaneous notes of meetings, telephone calls, lab work and other writings in a bound notebook • Have the pages of the lab notebook signed and dated by someone who understands the invention but is not a co-inventor • Maintain records of slides and or disclosures made in presentations and copies of reports

6. Inventor’s notebook • An inventor's notebook is used by inventors, scientists and engineers to record their ideas, invention process, experimental tests and results and observations. It is not a legal document but is valuable, if properly organized and maintained, since it can help establish dates of conception and reduction to practice. The information can improve the outcome of a patent or a patent contestation.

7. Purpose for an Inventors Notebook • A patent grants its owner(s) the right to sue those who manufacture and market products or services that infringe on the claims declared in the patent. Typically, governments award patents on either a first to file or first to invent basis. Therefore, it is important to keep and maintain records that help establish who is first to invent a particular invention. • The inventor's notebook (also called a journal, lab book or log book) is a systematic device for recording all information related to an invention in such a way that it can be used to develop a case during a patent contestation or patent-related lawsuit. • The notebook is also a valuable tool for the inventor since it provides a chronological record of an invention and its reduction to practice. Each entry must be signed and dated by a witness. The witness should not be someone with a conflict of interest (such as a research partner). If an inventor ever has to go to court to prove he or she was the first to invent, then the witness would be called to the stand to testify that the signature is theirs and they signed that page on that date.

8. Inventor’s mistake • A "virtual inventor's notebook", in which one scans note pages and emails them to oneself, would not provide the same legal protection as a bound inventor's notebook since it is easier to commit fraud with a virtual notebook. • The need for an inventor's notebook will diminish in the future as the United States is progressively implementing a first-to-file system. It has been said that first-to-file eliminates a troubling source of litigation, particularly for individual inventors who may lack the processes and legal resources to defend against evidentiary challenges by large corporate research organizations.

9. The Physical Requirements of An Inventor Notebook • To best serve its evidentiary function an inventor's notebook should be in a form where it will be readily apparent that the contents have not been tampered with, such as having pages that may have been removed, replaced, or altered. Accordingly, an inventor’s notebook should: • Be permanently bound with a fixed number of pages (no looseleaf binders); • Have all of the pages sequentially numbered; • Have space on each page for at least one witness to sign and date.

10. How To Write In The Notebook • You Should Be The Only One Using The Notebook 
Other than having the notebook pages witnessed as discussed below, you should be the only person writing in the notebook. Record your name and contact information somewhere in or on the book to identify it as yours. It should also be clearly labeled as being confidential information. • Write Permanently & Legibly 
All information placed in the notebook should be in permanent ink only (nothing eraseable), and should be clearly legible (so that a judge or jury could see and understand what has been written). • No Empty Spaces Or Skipped Pages
Don’t skip pages, or leave blank areas on a page. All text should be single spaced. Each page should be limited to entries from a single day for a single subject. Draw a large “X” through any remaining empty space on a page. • Permanently Attach Any Supplemental Materials 
Supplemental materials such as photographs, graphs, or drawings should be in permanent ink, be placed in chronological order, be permanently attached to the page (e.g. by glue), and be labeled. Write next to all supplemental material a description of what it is. Don’t Write About Different Inventions On The Same Page. 
If you use your notebook to document multiple inventions, don’t mix information about different inventions on the same page: Make sure that when you use a page it only has information about one invention. Use a “continued from page” and “continued on page” reference on each page to connect together pages about an invention. • NEVER Make Alterations Of Any Kind 
Never tear out pages, erase anything, or alter notebook entries. If you make a mistake while making an entry just draw a line through it so that the mistake is still readable, then date and initial next to the line. NEVER do anything to a page after it has been read and signed by a witness. • Don’t Record The Substance of Communications With Your Attorney 
You may need to disclose your notebook contents to third parties, such as witnesses, a patent examiner, judge, or jury. To minimize the risk in such cases of waiving the privilege of confidentiality you have for communications with your attorney (which can be valuable in litigation over an invention), it is recommended that you generally avoid recording the substance of any communications you have had with an attorney in your inventor notebook. You can always keep a record of any such communications separate from the notebook if necessary.

11. What To Write In The Inventor Notebook • Your Inventive Concept
As soon as possible, describe in full detail what your invention is, and how you contemplate the invention could be made and used. Use both text and drawings if appropriate. Someone else in the area of technology for the invention should be able to clearly understand from your description what the invention is, and how you would make and use the invention. • Your “Reduction To Practice” Efforts 
The act of invention is not legally complete until your invention has been “reduced to practice”. An invention is reduced to practice by either (1) filing a patent application, or (2) building a working prototype of the invention. Be diligent in your efforts to reduce your invention to practice by working in a continuous and reasonable manner to reduce your invention to practice with no large unexplained gaps of inactivity. Make regular and detailed entries in the notebook that describe what you are doing to reduce your invention to practice (e.g. ordering parts, conducting experiments, etc. . . ). Describe all the facts and circumstances of what you do, when you do it, and why you do it. Save any records related to your efforts to reduce your invention to practice (e.g. receipts, correspondence, test results). If you build a working invention have your corroborating witness(es) observe, in confidence, the invention working.

12. GETTING YOUR NOTEBOOK WITNESSED • In the U.S. evidence related to invention may need to be corroborated. So it can be important to disclose your inventive concept and reduction to practice efforts in confidence to at least one independent witness who is not a co-inventor, and document this by having them sign your notebook. • a. Treat Your Inventor Notebook As Confidential
Treat your notebook as highly confidential. This is important to maintaining your rights. Do not disclose the contents of it to anyone, other than your attorney, unless they first agree in writing to keep the information confidential and not use it. 

b. Make Sure Any Witness Used Is Qualified
Any corroborating witness must be a person who is not a co-inventor, is an adult, and who has the technical background to both read and understand your description of the invention. It is recommended that any witness used be someone who is credible, trustworthy, and of good character. Ideally they should not have a financial stake in the success of the invention, and not be an immediate family member. A witness should preferably be someone who you believe is reasonably likely to be available to provide testimony for you, if need be, many years after they witness your notebook. • c. Always Use A Written Witness Confidentiality Agreement
Before a witness reads any pages in the notebook with information about the invention, the witness should first read and sign a confidentiality agreement (also commonly referred to as a "non-disclosure agreement") where the witness promises to keep the confidential information disclosed to them a secret and not use the information.

13. Getting your notebook witnessed • Give each witness a copy of the completed confidentiality agreement that they have read and signed, and something of value (e.g. a dollar) in exchange for their agreement. Doing this helps to ensure that the agreement by the witness to keep your invention information confidential will be legally enforceable. • d. How To Have The Notebook "Witnessed"
After having signed a written confidentiality agreement, the witness(es) should read and understand the contents of each completed page in the notebook that has not already been witnessed. After reading the page they should sign and date (in permanent ink) a statement somewhere on the page indicating that they read and understood what was disclosed on the page on that date (see the sample hypothetical notebook page above). • e. Only One Witness Is Required, But Two Is Better
Using two witnesses increases the chances of at least one witness being available later if need be. However, one witness signing a page is sufficient. • Keep your witnessed inventor notebook in a safe place, and do not discard it even after you have filed a patent application and received a patent. Sometimes a witnessed inventor notebook will not be needed until years later. • IMPORTANT: Not A Substitute For A Timely Filed Patent Application
A properly maintained witnessed inventor notebook when used properly can be valuable. However, a witnessed inventor notebook is not a substitute for a timely filed patent application, and will not by itself give you any exclusive rights in an invention. Accordingly, if you do want to secure exclusive rights in an invention make full use of a witnessed inventor notebook but don’t unnecessarily delay in filing a patent application.

14. Invention Disclosure • Gives the OPITT basic information about the invention • The ID should have a brief description of the invention in simple to understand language • The description should be “straight to the point” • The description should focus on its inventive concept (what makes it different then the rest) • Diagrams and pictures should be included to better understand the invention