Shoring up your Patent's Value
What To Do if You Haven't Been Keeping an Invention Logbook
© By Stephen Paul Gnass
Did you know that around the world, the patent system is "First-to-File"? This means that the inventor who files a patent first, is the one that wins the patent. But I explain to many of my clients that the U.S. has a different "First-to-Invent" system, which means that the first person who invented the product first, wins the patent, even if he/she filed a patent after another person filed it.
The Inventor's Logbook
This is where the importance of the inventors "logbook" comes in. You may have heard about it, it's also known as the "inventor's notebook", a "laboratory notebook" or a "science notebook". In order to prove that an inventor was the "first inventor", inventors must follow the proper documentation and due diligence procedures by keeping a written logbook of their ongoing work on their invention's progress from the very beginning.
As a matter of fact, large corporations routinely use the "First-to-Invent" system and keep documented logbooks while their product ideas are in the in-house research and development stages. They file the patent only after their research and testing indicates that the product will likely be successful.
In fact, Thomas Alva Edison relied on this system, using the logbook to protect his ideas in the early research and development stages for his inventions, only securing patents for the inventions that were ready to be launched.
What To Do if You Haven't Been Keeping an Invention Logbook
But not everyone is aware that they should have been keeping a logbook from the beginning, so I often get the question, "what do I do if I haven't been keeping a logbook in the past?" Well, here's my recommendation.
Whether you're in the early development stages, or even if you're in the patent pending or patented stage, I suggest that you go back and reconstruct as much of your invention's history as you can. Why? Because it will put much more value into your patent, which could help you in securing a better licensing agreement or even get more financing. The logbook does this by strengthening your patent with verifiable dates and activities about when and how your invention was developed, which is invaluable in the case of any future infringements on your invention or any U.S. Patent and Trademark Office action*.
Reconstructing your Invention's History
But you shouldn't just write up a paragraph or two about the history, and make it "light" or vague. In order for it to be valid and stand up in court, I recommend that you dig up as much information as you can on your invention's development so that your invention's "history" is backed-up by as much substantiated evidence as possible i.e. dates, receipts, paperwork, phone calls, attorney meetings, etc.
I suggest that you start your logbook by including this reconstructed historic background as the first entry in your logbook. Then, after you have completed the history and timeline to your logbook, then it's recommended that you have it witnessed and notarized.
After this initial history section has been completed, then you should start maintaining the logbook in "real" time i.e. keep it up with periodic entries no less than 60 or 90 days maximum between entries. The "First-to-Invent" requires that you "reduce your invention to practice", which means that you can't just sit on it without doing anything and still own it.
In re-creating the history, don't back-date any entries into your logbook, for example, dating them with past dates as if you had started the logbook in the past, when you didn't. Don't make the mistake of fudging the date of concept or entry dates because if you ever have to use it in court, it could end up hurting you, instead of helping you, by being totally dismissed and thrown out, not accepted. Once the deception is uncovered, your invention's protection and patent will be in jeopardy. The main idea is that you're writing about the past, and include the dates that events took place, but dating the historical entry with today's date. You're making it a history of the past in the past tense, labeling it as history, and then having that history section notarized to separate it from the current entries. Since it's backed up by recorded documentation, it's not just "made up" history. It's substantiated and documented by dates, places and people.
Recommended tips for reconstructing your invention's history
Step 1. Gather documentation.
First, gather all documentation related to your invention. This can include phone bills, cancelled checks, bank statements, paid statements or receipts for work done on your invention like prototypes, patents, manufacturing, receipts for services you bought, faxes, emails and correspondence, consultations, any tools that you bought to make it, confidentiality agreements [nondisclosure agreements], loose notes on scraps of paper or napkins, etc. Put it all together in one place, until you've gathered as much information as possible.
Step 2. Organize your documentation by date.
Next, sort through all of the information and organize it by date. What this will help you do, is to have a documented history of the actual dates that you took action. For example, instead of writing a vague statement that "sometime in the summer of 2003 I created my first prototype", you'll be able to have a series of verified activities backed up with documentation that prove when you created your first prototype. The next step will help you do this.
Step 3. Create a chronological timeline.
Next, on a sheet of paper or on your computer, start making a written list of the sorted information. Remember that this is only a worksheet, you're not entering this in your logbook yet. This worksheet will help you tremendously in reconstructing your activities related to your invention which will now be based on "facts", not just vague remembering.
For example, you can make a list including the Date, Vendor, Activity:
1/4/97 Home Depot. Purchased supplies to develop a first crude prototype. Supplies included 2 lbs of xxx, 2 units of xxx, 5 units of xxx, 10 units of xxx. The cost was $xxx, the receipt is attached [or on file].
1/10/97 Home Depot. Purchased additional supplies to develop prototype. Supplies included 2 more units of xxx, 6 units of xxx. The cost was $xxx, the receipt is attached [or on file].
1/25/97 Attorney Jack Smith. Went to his office at 2:00pm for my first consultation on getting a patent. The fee was $xxx, the receipt is attached [or on file].
1/27/97 ABC Patent Search. Had a patent search done with this company. The results were.......... I have the report on file. The cost was $xxx, the receipt is on file.
2/10/97 Attorney Jack Smith. My attorney filed the patent application. A copy of the application is on file. The fee was $xxx, the receipt is on file.
Step 4. Fill in the time blanks.
Now, go back over the chronological timeline and add any other information that you remember. In the beginning of this history, state what problem you were solving when you came up with the idea, how you came up with the idea, and any other info about when you first thought of the invention. The remembered information will be much more credible since you now have verifiable and documented dates and activities.
Step 5. Write the reconstructed history into your logbook as the first entry.
Now, bring out your logbook, date your logbook with the current date, and label this section "Invention History", then write the history into your logbook as the first entry and have it notarized immediately, so that you establish the date of the history entry.
Step 6. Start keeping current logbook entries.
Now that's you've written in the history, you can start fresh entries that are current and keep regularly making entries as you work on your invention.
TIP: One way to help organize all this material, is to use 4x6 index cards. For example, you can jot down an event on an index card and list all related information on the card. For example, you can use a card for a meeting with a patent attorney and jot down the date, time, what you talked about and anything else you remember. You can use another index card for a trip to a hardware store, etc. Then you can sort all the index cards by date.
Free information on keeping and maintaining your invention logbook, is available at the INVENTING 101 free online course at the National Congress of Inventor Organizations web site at:
* A U.S. Patent and Trademark Office action is filed against your patent when somebody else is filing a patent on the same invention and claim that they invented it first.
Disclaimer: Situations like these, that I describe in these articles, are snapshots at the time
that I write them. Things may change, for example, the U.S. Patent and Trademark Office rules or laws may change, etc. This article is for general information purposes only and is not a substitute for legal counsel or financial services. The information provided is accurate to the best of our knowledge, and we are not liable for any omissions or incorrect information. It is the responsibility of the reader to verify any legal information with appropriate professionals. If you need specific legal assistance, we recommend that you contact an attorney or accountant.
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ABOUT STEPHEN GNASS:
Stephen Paul Gnass is founder of InventionConvention.com,
Executive Director of the National Congress of Inventor
Organizations [NCIO] and an inventors advocate. Mr. Gnass
speaks on the subject of the "Business of Inventing" [tm] and
has had his articles reprinted in various magazines. As Senior
Consultant with the Gnass Group, he consults independent
inventors, entrepreneurs, and small businesses. He can be emailed at
firstname.lastname@example.org or visit www.businessofinventin
A SPECIAL NOTE: Complimentary
If you're further along the path of inventing and are ready to
launch your product, and need assistance in determining whether
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I'll be more then happy to offer you a Complimentary
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P.S. I offer additional brainstorming as part of the cyber-
exhibiting program. Or, if you have special projects or
problems and you need some brainstorming, I also offer a-la-
carte consulting sessions with a special rate for inventors.
Situations like these, that I describe in these articles,
are snapshots at the time that I write them. Things may
change, for example, U.S. Patent and Trademark Office rules or laws may
change, etc. In addition to the constant research that we're
doing, I would like to personally speak with anyone that has
had a similar or related experience. Feel free to email me at
email@example.com and include the best time
to get in touch with you.
This article is for general information purposes only and is
not a substitute for legal counsel or financial services. The
information provided is accurate to the best of our knowledge,
and we are not liable for any omissions or incorrect
information. It is the responsibility of the reader to verify
any legal information with appropriate professionals. If you
need specific legal assistance, we recommend that you contact
an attorney or accountant.
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