Dates of Invention
Laboratory notebooks are often relied upon to establish dates of invention, which are frequently necessary to swear behind prior art. Good notebooks practices should address a number of factors to prove dates of invention.
First, there must be a recognition that an inventor appreciated the invention’s significance. Legalistically, there is no nunc pro tunc conception. The contemporaneous documents must show a “complete conception”, i.e., that the inventor appreciated the discovery, and that the discovery met all the elements of what is later claimed.
Merely reciting data may be insufficient to prove that, as of a certain date, the inventor appreciated the discovery. Therefore, inventors should include a certain amount of narrative in laboratory notebooks or in surrounding progress reports to show that they appreciated what they discovered. Although excess discussion should be avoided, some simple statements that the experiments succeeded in demonstrating [x] are invaluable in litigation.
Second, independent corroboration is a legal requirement for substantiating the date of invention. Notebooks should be countersigned in as timely and regular a fashion as possible. The countersigning witness should be familiar with the work being performed, and should not be an inventor on the patent, so the corroboration is independent.
Third, an inventor may not be able to establish a conception date without demonstrating a “reasonable expectation of success.” A mere hope that something might work or a mere research plan to accomplish an ambitious objective may be insufficient to uphold a conception date. Rather, documenting successes along the way to show that the chosen path is working are important to demonstrate that the project is not merely a “hope.”
There is, however, tension between demonstrating a “reasonable expectation of success” and rebutting nonobviousness. Ideally, the reasonable expectation of success should come from positive developments along the course of research, not from expectations on Day 1. Likewise, when preparing documents for funding entities, optimism about chances for success may be problematic when later defending against an obviousness challenge.
Privileged information should never go into laboratory notebooks. Laboratory notebooks are typically handwritten, often badly. Reviewing stacks of notebooks is an arduous task and it is common for privileged material to slip through the review.
The privileged material might be descriptions of other companies’ patents, discussions of other prior art, notes of meetings with lawyers, or efforts to design around a patent. Scientists must not put in their notebooks information about patents or information directed by or directed to lawyers. Reviews of prior art need to go into a separate document marked “privileged.” Attempts to design around a patent should also be tracked in a separate notebook.
Personal matters should never go in laboratory notebooks. Although attorneys will do their best to withhold embarrassing personal matters, it is not privileged, and redacting out personal remarks looks suspicious.
Half-baked ideas and random thoughts should not be put in laboratory notebooks either. Laboratory notebooks are formal records and should be used for methodical recording of experiments. Incomplete or inaccurate ideas that are written down will have the veneer of truth years later in litigation. Attempts to distance the story from these inaccurate records may sound disingenuous at trial.
Laboratory notebook entries should never be altered. Modifications, deletions, or additions to a laboratory notebook can cast a huge cloud of suspicion. In the infamous case of Aptix v. Quickturn, allegations of tampering ended the case and landed Aptix’ inventor/CEO in prison.
Even where the allegations are unjustified, they are a huge and costly distraction. To avoid any suspicion, laboratory notebooks should be bound, written in ink, and the inventor should avoid blank spaces (crossing out blank spaces) and start each new day on a new page. And laboratory notebooks should be carefully preserved—their disappearance would be an invitation for trouble.