| Electronic Notebooks and the Requirements to | | | | persons who are named on the patent. (I use the |
| Prove Date of Invention in Patent Interferences | | | | word "patent" here to mean either patent or |
| This paper contains an excerpt of an email I sent | | | | patent application, for simplicity.) Corroboration |
| to the PIUG (Patent Information User's Group) | | | | therefore requires a non-inventor to have |
| email distribution list on November 30, 2003. | | | | reviewed and understood the inventors' work. It |
| 1. It would be useful to all of you to have a | | | | is the date of that corroborator's review that |
| better understanding of the requirements relating | | | | defines provable evidence a date of invention. |
| to proof of date of invention in patent | | | | Thus, a co-worker, technician, manager, or even a |
| interferences in order to understand the issues | | | | secretary can corroborate. Of course, it is less |
| relating to electronic notebooks. First, keep in mind | | | | likely that a non-technically trained person will |
| that a date of actual invention is now only | | | | understand what they were asked to |
| relevant in the United States and the Philippines. In | | | | corroborate, and therefore, it would be harder to |
| all other major jurisdictions, it is the date of filing | | | | prove a right to a date of invention based upon a |
| of a patent application that is the earliest date | | | | non technical person's knowledge. |
| allowed to as a date of invention, except where | | | | 4. Chain of Custody: Evidence in legal proceedings |
| there are issues of theft of invention. | | | | in the U.S. is only admissible if it meets the |
| 2. There are some substantive legal issues that | | | | admissibility requirements of the Federal Rules of |
| you should all be aware of relating to evidence of | | | | Evidence (FREs). The FREs require that |
| inventions for the purposes of proving priority of | | | | documents and things relied upon as evidence |
| invention (first to invent) for U.S. patents. The law | | | | may be challenged for lack of a "chain of |
| respecting how to prove priority of invention is in | | | | custody", i.e., proof that they were in the |
| fact a well defined body of law. Its application to | | | | possession and control of a person or entity that |
| electronic record keeping merely requires an | | | | would not tamper with them. |
| application of that law to e-records. No more, no | | | | 5. In all evidentiary proceedings, most documents |
| less. Thus, it is the legal principles that are | | | | and things held out as evidence do not "speak for |
| paramount, not the technology, per se, of record | | | | themselves"; they must be brought into evidence |
| keeping. | | | | by testimony of a person explaining what they |
| 3. The rule requiring corroboration: Evidence of | | | | are and where they came from. Exceptions to |
| what was invented and when that invention came | | | | this rule are self authenticating records, such as |
| into existence is generally NOT admissible in the | | | | patents, publications, certain notarized documents, |
| United States Patent and Trademark Office and | | | | and the like. |
| U.S. courts for the purpose of invalidating claims | | | | 6. Generally speaking, a document management |
| to the same invention made by another UNLESS | | | | system should incorporate technology and |
| it is corroborated by someone other than the | | | | security that facilitates meeting the evidentiary |
| inventor. Here, "inventor" means the person or | | | | requirements noted above. |