Litigation

Patent defense: properly document your inventive activities

By Rick Boyd

The United States remains nearly unique in the world in following a ?first to invent? rule. An inventor can obtain priority over all ostensible prior art by proving an earlier date of invention, as well as diligent reduction to practice.  Elsewhere, priority of invention is given to the first to file; it is quite literally a race to the patent office.

At Ater Wynne, we emphasize the importance of inventors diligently keeping signed, dated, and independently witnessed records of their inventive activities.  The requirements are few and simple, but not just any written record will suffice.  In an opinion issued last week, the Court of Appeals for the Federal Circuit highlighted this critical discipline.

In The Proctor and Gamble Company v. Teva Pharmaceuticals USA, Inc., P&G sought to prove the date of invention of risedronate - the active ingredient of P&G?s osteoporosis drug Actonel®.  P&G offered into evidence an inventor?s notebook that appeared to document the invention of risedronate. Although signed and dated by the inventor, the pages containing critical entries were neither signed by independent witnesses, nor corroborated by other evidence.

The court refused to accept the self-vouching notebook as sufficient evidence of earlier invention, emphasizing that the inventor ?must provide independent corroborating evidence in addition to his own statements and documents.?

Patent attorneys zealously go to bat for their clients.  They can do no less.  But for proving the all-important date of invention, no high-powered legal arguments can match the effectiveness of a stained and dog-eared, but diligently and properly kept inventor?s notebook.

Full post as published by Northwest Business Litigation Blog on May 21, 2009 (boomark / email).