Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 103

The AIA eliminated the previous interference procedure by awarding a patent to the first to file a patent application when two or more inventors or inventor groups have developed the same invention at approximately the same time. However, the AIA now includes a new section 35 U.S.C. §135, which provides a second‐to‐file inventor the ability to have the USPTO correct the inventorship in the first filed application if it can be established that the first‐to‐file inventor derived the invention from the second‐to‐file inventor. Due to the possibility that this scenario can occur, it is important for all inventors to keep adequate records, witnessed preferably, to establish the dates of conception and reduction to practice of the invention before it was “stolen.”

The act of conception relates to the first concept, idea, or informal description of a working example of the invention. Usually, the first conception of an invention takes place either on a computer screen, on small scraps of paper where the idea was initially set down, or possibly on other media of recording the inventive idea, such as a dictating machine. It is important to record the earliest date of conception because conception followed by diligence in reducing the invention to practice, in a working model or a complete illustration of a working model, would determine the date of invention that the inventor can rely upon in a derivation proceeding. My experience has shown that the initial act of conception can also be proven by presenting evidence of comments made to others in the project control group that they recall, sketches on restaurant or tavern napkins, or stained lab notebook papers.

One comment made earlier is worthy of repetition. Most inventors today work by themselves, in cells or in cubicles, in developing an invention. It is important, however, that early work on inventions be somehow witnessed by others and documented, so that, at a later time, a second party or a document can corroborate your first date of invention. Working alone on your idea without disclosing the same to other people within your working group and not having them witness and sign off on your invention is not recommended practice. Certain corporations with which I have been involved require their inventors to keep notes in lab or log books, and to have each page of the lab or log book dated and witnessed by another person in the group at the end of each day.

The reason for this exercise is that, whenever an inventor is required to testify in court or any other judicial proceeding that his or her invention has been derived by another, the inventor’s testimony must be corroborated by other documentation or the testimony of live witnesses that the inventor actually did conceive the invention at the time that he or she reported. It is obvious that anyone can sit on a witness stand and testify that they had invented a certain device before someone else, but unless they have proof of such conception, such oral evidence alone will not be accepted by the court. Therefore, keep in mind as you develop inventions throughout your careers that each step you take may have to be ultimately corroborated by someone else or by your documentation, electronic or otherwise, to prove the veracity of your statements regarding conception.