JULY 2009

Edwards v. Cook Bromhead Memo

Edwards v. Cook Judgment

JUNE 2009

SIGN IT, DATE IT, SCAN IT
Alleging Prior Invention under 37 CFR 1.131

          On May 20, 2009, the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO) published an Informative Opinion in Ex parte Daniels (http://www.uspto.gov/web/offices/dcom/bpai/its/fd080568.pdf).  The decision highlights an important reminder for inventors and for the departments that supervise their patent protection.  For ideas not contained in dated and signed laboratory notebook pages, inventors should keep dated, signed, and scanned copies of draft research plans, manuscripts, grant proposals, etc.

          At issue in In re Daniels was an affidavit under 37 CFR 1.131 that alleged prior invention – ‘swearing behind’ the date of a cited document.  The affidavit stated that the invention “was reduced to practice on a date prior to [the effective date of the reference] or conceived on a date prior to [the effective date] and diligently reduced to practice thereafter.”  The attached supporting evidence had “a date prior to [the effective date] and/or existed in draft form prior to [the effective date]” (emphasis added).  Citing 1964 and 1974 decisions, the BPAI found the evidence insufficient to antedate the prior art.  The decision contains considerable language that will enlighten the patent practitioner going forward, namely, the affidavit must “sufficiently explain the content of the [evidence] or how the information therein establishes acts amounting to [reduction or conception coupled with diligence] of the claimed invention” (emphasis added). However, the decision contains an important reminder for inventors, technology transfer departments and patent departments alike. 

         The BPAI focused on a portion of the 131 affidavit alleging draft form of certain evidence (see above).  “Because the documents attached to Appellants’ affidavit may have been only in draft form prior to the effective date of the prior art, we have no way of knowing [what portion of the draft] existed prior to the effective date” .   In other words, if a draft is updated multiple times, there is no way to know when the necessary information was added, absent keeping signed and dated copies of each (significant) draft.

          In a period of time in which internal reports (often in draft form), spreadsheets, and draft grant proposals have supplemented best practices for keeping laboratory notebooks in some settings, researchers must be reminded to keep signed and dated drafts/manuscripts/reports to document their invention date.  Individual institutions will need to be mindful of these issues going forward as they update their guidelines for inventors.

          If you would like our assistance in reviewing your institution’s guidelines for documenting invention, or in speaking with your inventors regarding these matters, please let us know.  The foundation for patent protection begins the moment the proverbial light bulb lights up.

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